
Class I ^2 3 
Book^LL£_S 



Copyright N^_ 



COBKIGHT DEPOSrr. 




SAMUEL SPARKS FISHER 

I 869- I 870 

"the great commissioner" 

The Publication of practice decisions was commenced in his 
administration. 




GENERAL HALBERT E. PAINE 

LAWYER, SOLDIER AND AUTHOR 

The substance of our present rules of practice was formu- 
lated during his administration, as Commissioner of Patents. 
(See Rules of 1879 in Appendix.) 




THOMAS EWING 

His attempts to make the Patent Ofifice practice more uni- 
form are now being subjected to the test of experience. 



ANNOTATED RULES OF PRACTICE 

IN THE 
UNITED STATES PATENT OFFICE 



ANNOTATED 



RULES OF PRACTICE 



IN THE 



UNITED STATES PATENT OFFICE 



BY 

E. J. STODDARD 

DETROIT BAR 



DETROIT 

FRED S. DRAKE 

1920 



^^ 



^ W'\ 



v-^ 



Copyrighted, 1920 

By 

E. J. Stoddard 



>5 

OCT 25 1320 > 



©CU601026 



PREFACE 

^ The system governing the practice before the 

United States Patent Office is unique. There is, 
First, The Constitution; 
Second, The Statutory Law; 
Third, The Decisions of the Courts; 
\} Fourth, The Rules of Practice; and 

^ Fifth, The Decisions of the Commissioners. 

These are interdependent and should be considered 
in the order named. 

This book relates to that part of the practice which 
is governed by the rules and the constructions that 
have been placed upon them by the decisions of the 
Commissioners and the Courts. It contains the data 
of the daily practice, often arbitrary, without which 
there would be an unnecessary burden on the memory 
of the practitioner. 

These notes have been a gradual growth commenc- 
ing twenty-five years ago and kept up to date by the 
adding of current constructions. From these the 
reader gets a view from the inside as well as from 
the outside of ''The Office". 

Our Patent Office Practice is still incomparably the 
best in the world. Let us keep it so. 

The difficulties* of the judges in comprehending the 
facts involved in patent cases, which have been cumu- 
lative with the increasing complexity of the Arts and 
Sciences, have somewhat weakened the authortiy of 
their opinions. Pending legislation proposes to 
remedy this. 

E. J. Stoddakd. 
May 1, 1920. 

*"Neither courts nor ordinary juries are perfectly adapted to the 

V 



VI PREFACE. 

investigation of mechanical and scientific questions." — Cochrane v. 
Deener, 11 Brodix, 333 (Supreme Court, 1877). 

"The defense of want of invention in the Diddell machine is not 
urged here because it is said that the decision of that question depends 
upon mechanical comparisons too numerous and complicated to be 
conveniently made by a bench of judges." — Continental Paper Bag 
Co. V. Eastern Paper Bag Co., 136 O. G., 1297 (Supreme Court, 1908). 

"How long we shall blunder along without the aid of unpartisan 
and authoritative, scientific assistants in this administration of justice, 
no one knows; but all fair persons not conventionalized by provin- 
cial legal habits of mind ought, I should think, unite to effect some 
such advance." — Judge Hand in Park Davis & Co. v. Mulford Co., 
189 F. R. 95-115. 

"The truth is that the worst effect of the existing situation is that 
it undermines confidence. It demoralizes the Bar. A lawyer does 
not know how to advise his clients. It tempts both attorney and 
client to take chances. The law-abiding citizens, who want to obey 
the law, who want to respect valid patents, but do not want to be 
terrorized into acquiescence in invalid patents, do not know what 
to do and can not find out. There is but one remedy and it is in a 
single court of last resort in patent causes."- — Judge Robert S. Taylor, 
Chairman, Committee of American Bar Association. 

"It is a travesty on justice to try to patent cases before a judge, 
who is not a mechanic nor a patent expert and who has no imagina- 
tion, who can not picture the improvements that certain changes 
will make in the development of an art and who can not connect the 
operation of the invention with the practical work in a factory." — 
Commissioner, James T. Newton (Present Commissioner). 



TABLE OF CONTENTS. 



Page 

Historical Note 1 

CORRESPONDENCE AND INTERVIEWS. 

Rule 1. Business to be Transacted in Writing ' 9 

Rule 2. Correspondence to be in Name of Commissioner 10 

Rule 3. All Charges to be Prepaid 10 

Rule 4. Personal Attendance of Applicants Unnecessary 10 

Rule 5. Correspondence with Assignees 10 

Rule 6. Correspondence with Inventor and Assignee 12 

Rule 7. Correspondence with Attorney 14 

Rule 8. Separate Letters ". 15 

Rule 9. Letters Relating to Applications 15 

Rule 10. Letters Relating to Patents 15 

Rule 11. Protests 15 

Rule 12. Mail 17 

Rule 13. Interviews and Examiners 18 

INFORMATION TO CORRESPONDENTS. 

Rule 14. Subjects on which Information Can Not be Given. . 18 

Rule 15. Pending Applications Kept in Secrecy 19 

Rule 16. Records and Copies in Patented Cases. 23 

ATTORNEYS. 

Rule 17. Register of Attorneys 23 

Rule 18. Power of Attorney 27 

Rvde 19. Substitution and Association 28 

Rule 20. Revocation 28 

Rule 21. Attorneys' Room 30 

Rule 22. Decorum and Courtesy in Business 31 

Rule 23. Services of Senators or Representatives 32 

APPLICANTS. 

Rule 24. Who is Entitled to a Patent 33 

Rule 25. Executors and Administrators 35 

Rule 26. Patents to Assignees 37 

Rule 27. Inventor Believing Himself to be First Inventor 41 

Rule 28. Joint Inventors 41 

Rule 29. Foreign Patents 43 

vii 



VIU TABLE OF CONTENTS. 

APPLICATION. Page 

Rule 30. Requisites of Application 48 

Rule 31. Incomplete Application not Filed 52 

Rule 32. All Parts of Application to be Filed Together 54 

Petition. 

Rule 33. Petition 54 

The Specification. 

Rule 34. Written Description 54 

Rule 35. Detailed Description 62 

Rule 36. Improvements 63 

Rule 37. Claims 63 

Rule 38. Reference to Drawings 127 

Rule 39. Arrangement of Specification 128 

Rule 40. Signature to Specification 130 

Rule 41. Joinder of Inventions 132 

Rule 42. Division of Application. 163 

Rule 43. Cross-References in Cases Relating to Same Subject.. . 183 

Rule 44. Reservation Clauses not Permitted 184 

Rule 45. Legible Writing Required 185 

The Oath. 

Rule 46. Oath of AppUcant 185 

Rule 47. Officers Authorized to Administer Oaths 189 

Rule 48. Supplemental Oath for Matter not Originally Claimed . 191 

The Drawing. 

Rule 49. Drawings 194 

Rule 50. Requisites of Drawings 194 

Rule 51. Two Editions of Drawings 208 

Rule 52. Uniform Standard 208 

Rule 53. Drawings for Reissue Applications 214 

Rule 54. Defective Drawings 214 

Rule 55. Drawings Furnished by Office 215 

The Model. 

Rule 56. When Models are Required 215 

Rule 57. Requisites of Model 216 

Rule 58. Material 217 

Rule 59. Working Models 217 

Rule 60. Models in Rejected and Abandoned Cases 217 

Rule 61. Models Filed as Exhibits 217 

Specimens. 

Rule 62. Specimens of the Composition 218 



TABLE OF CONTENTS. IX 

THE EXAMINATION. Page 

Rule 63. Order of Examination 219 

Rule 64. Merits Treated Throughout. At Last Form Insisted 

Upon. 221 

REJECTIONS AND REFERENCES. 

Rule 65. Notice of Rejection, with Information and References. . 226 
Rule 66. On Rejection for Want of Novelty Best References to 

be Cited 231 

Rule 67. Adverse Decisions on Preliminary Questions in Ex 

Parte Cases 258 

AMENDMENTS AND ACTIONS BY APPLICANTS. 

Rule 68. Right to Amend 261 

Rule 69. Request for Reconsideration 294 

Rule 70. Amendments to Correspond to Original Drawing or 

Specification 297 

Rule 71. Inaccuracies or Prolixity 304 

Rule 72. Specification not to be Returned 305 

Rule 73. Amendments must be Specific 307 

Rule 74. Specification Rewritten 308 

Rule 75. Patents Showing but not Claiming Invention 308 

Rule 76. Application Rejected on References Showing but not 

Claiming Invention, etc 314 

Rule 77. Abandonment 318 

Rule 78. Amendment after Notice of Allowance without With- 
drawal from Issue 320 

DESIGNS. 

Rule 79. Design Patents, to Whom Granted 322 

Rule 80. Terms of Design Patents 328 

Rule 81. Proceedings 329 

Rule 82. Arrangement of Specification 336 

Rule 83. Model 336 

Rule 84. Drawings 336 

REISSUES. 

Rule 85. Granting Reissue 338 

Rule 86. Abstract of Title 345 

Rule 87. Prerequisites 346 

Rule 88. New Matter 348 

Rule 89. Division of Reissue of Application 349 

Rule 90. Reexamination of Reissue Claims 351 

Rule 91. Original Patent 351 

Rule 92. Matter to be Claimed only in a Reissue 351 



X TABLE OF CONTENTS. 

INTERFERENCES. Page 

Rule 93. Interference Defined 352 

Rule 94. When Declared 361 

Rule 95. Preparation for Interference 363 

Rule 96. Failure to Prepare for Interference 370 

Rule 97. Examiner Preparing Interference Notices, etc 378 

Rule 98. Revision of Notices by Examiner of Interferences ... . 382 

Rule 99. Reference to Commissioner 383 

Rule 100. Primary Examiner Retains Jurisdiction 383 

Rule 101. Jurisdiction of Examiner of Interferences 383 

Rule 102. Institution and Declaration of Interference 386 

Rule 103. Notices to Parties 387 

Rule 104. Motion for Postponement of Time for Filing 388 

Rule 105. Certified Copies Used in Interference Proceedings. . . . 389 

Rule 106. New Application for Claims not in Interference 390 

Rule 107. Disclaimer to Avoid Interference 392 

Rule 108. Inspection of Claims of Opposing Parties 394 

Rule 109. Invention Shown, but not Claimed in Application. . . . 397 

Rule 110. Preliminary Statements 405 

Rule 111. When Opened to Inspection 428 

Rule 112. Notice to Amend 429 

Rule 113. Motion to Amend 430 

Rule 114. Failure to File Preliminary Statement 441 

Rule 115. Failure to File Testimony Excluding Setting up Inven- 
tion Prior to Application Date 444 

Rule 116. Presumption as to Order of Invention 444 

Rule 117. Statement not Evidence 454 

Rule 118. Time for Taking Testimony 454 

Rule 119. Failure to Take Testimony 465 

Rule 120. Postponement of Hearing 466 

Rule 121. Enlargement of Time for Taking Testimony 467 

Rule 122. Motion to Dissolve for Irregularity, Nonpatentability, 

etc 468 

Rule 123. Motions to Effect Stay of Proceedings 526 

Rule 124. Appeals from Adverse Decisions 523 

Rule 125. Determination 540 

Rule 126. Statutory Bar Suggested 542 

Rule 127. Second Interference 558 

Rule 128. Suspension of Interference for Consideration of New 

References 559 

Rule 129. For Addition of New Parties 561 

Rule 130. Nonpatentability at Final Hearing 562 

Rule 131. Prosecution or Defense by Assignee 574 

Rule 132. Claims of Defeated Parties after Interference 575 



TABLE OF CONTENTS. XI 

APPEALS TO THE EXAMINERS-IN-CHIEF AND TO THE 
COMMISSIONER AND PETITIONS TO THE COM- 
MISSIONER IN THE EX PARTE PROSECU- 
TION OF APPLICATIONS. Page 

Rule 133. Appeal to Examiners-in-Chief 579 

Rule 134. Prerequisites 589 

Rule 135. Examiner's Statement of Grounds of Decision 592 

Rule 136. Appeal from Examiners-in-Chief to Commissioner.. . . 594 

Rule 137. Oral Hearing before Examiners-in-Chief Briefs 595 

Rule 138. Application Remanded for Reconsideration on Affi- 
davits 596 

Rule 139. Decisions of Examiners-in-Chief 597 

Rule 140. Rehearings 603 

Rule 141. Jurisdiction 612 

Rule 142. Petition to Commissioner, without Fee 614 

APPEALS TO THE EXAMINERS-IN-CHIEF AND TO THE 
COMMISSIONERS IN CONTESTED CASES. 

Rule 143. Remedy by Appeal 622 

Rule 144. Briefs in Appealed Cases 624 

Rule 145. Right to Open and Close 624 

Rule 146. Jurisdiction 625 

RECONSIDERATION OF CASES DECIDED BY 
FORMER COMMISSIONER. 

Rule 147. Reconsiderations and New Trials 625 

APPEALS TO COURT OF APPEALS OF THE 
DISTRICT OF COLUMBIA. 

Rule 148. Appeals to Court 625 

Rule 149. Notice to Commissioner of Appeal to Court 638 

Rule 150. Pro Forma Proceedings in Patent Office 639 

HEARINGS. 

Rule 151. Hour of Hearing 639 

Rule 152. Wishes of Parties and Attorneys '. 640 

MOTIONS. 
Rule 153. Practice in Motions. . 640 

TESTIMONY IN INTERFERENCE AND 
OTHER CONTESTED CASES. 

Rule 154. Notice of Taking Depositions 645 

Rule 155. Formalities 653 

Rule 156. Testimony 653 



Xll TABLE OF CONTENTS. 

Page 
Rule 157. Testimony Taken in one Interference may be used in 

Another. 654 

Rule 158. Testimony Taken in Foreign Countries 656 

Rule 159. Evidence on Hearing 658 

Rule 160. Subpoenas • 661 

Rule 161. Inspection 661 

Rule 162. Copies of Testimony 662 

BRIEFS. 

Rule 163. Size and Time of Filing Briefs 664 

ISSUE. 

Rule 164. Notice of Allowance 665 

Rule 165. Withdrawal from Issue 666 

Rule 166. Withdrawal from Issue will not stay Abandonment. . . 669 

DATE, DURATION, AND FORM OF PATENT. 

Rule 167. Date of Patent 669 

Rule 168. Title of Invention 671 

DELIVERY. 

Rule 169. Delivery of Patent 671 

CORRECTION OF ERRORS IN LETTERS PATENT. 

Rule 170. Correction of Mistakes Incurred through Fault of the 

Office 671 

ABANDONED, FORFEITED, REVIVED, 
AND RENEWED APPLICATION. 

Rule 171. Abandoned Application. . 674 

Rule 172. Revival of Application.':.': 691 

Rule 173. New Application 695 

Rule 174. Forfeited or Withheld Application 696 

Rule 175. New Application after Nonpayment of Final Fee 696 

Rule 176. Old Application Papers may be Used in Renewal 699 

Rule 177. Forfeited and Abandoned Applications 700 

Rule 178. Notice of Subsequent Applications 700 

Rule 179. Copies 700 

EXTENSIONS. 

Rule 180. Extensions 703 

DISCLAIMERS. 

Rule 181. Disclaimer of Parts of Inventions not New 703 

Rule 182. Different Kinds of Disclaimers 705 



TABLE OF CONTENTS. XIU 

ASSIGNMENTS. Page 

Rule 183. Assignability of Patents , 705 

Rule 184. May be Vested in Whom 706 

Rule 185. Validity of Assignment 707 

Rule 186. Recording 707 

Rule 187. Conditional Assignments 708 

Rule 188. Patent Issue to Assignee 709 

Rule 189. Acknowledgement of Assignments 710 

OFFICE FEES. 

Rule 190. Payable in Advance 710 

Rule 191. Schedule of Fees 710 

Rule 192. Order for Copy of Assignment 715 

Rule 193. Copies and Tracings from the Files 715 

Rule 194. Mode of Payment 715 

REPAYMENT OF MONEY. 

Rule 195. Money Paid by Mistake Refunded 717 

PUBLICATIONS. 

Rule 196. Official Gazette 719 

LIBRARY REGULATIONS. 

Rule 197. Removal of Books . 720 

AMENDMENTS OF THE RULES. 

Rule 198. Publication of Amendment 721 

QUESTIONS NOT SPECIFICALLY PROVIDED FOR. 

Rule 199. Supervisory Authority of the Commissioner 721 

Rule 200. Application of Former Rules 722 



APPENDICES 
Appendix A 

CHARTS AND SYMBOLS. 

Charts for Draftsmen 724 

Electrical Symbols . 724 

Appendix B 

FORMS 

Petitions. 

No. 1. By a sole Inventor 728 

No. 2. By Joint Inventors 728 

No. 3. By an Inventor, for Himself and Assignee 729 



XIV TABLE OF CONTENTS. 

Page 

No. 4. Petition with Power of Attorney 730 

No. 5. By an Administrator 730 

No. 6. By an Executor 731 

No. 7. By a Guardian of an Insane Person 732 

No. 8. For a Reissue (by the Inventor) 732 

No. 9. For a Reissue (by the Assignee) 733 

No. 10. For Letters Patent for a Design 734 

No. 11. For a Caveat 734 

No. 12. For the Renewal of a Forfeited Application 735 

Specifications. 

No. 13. For an Art or Process 735 

No. 14. For a Machine 737 

No. 15. For a Composition of Matter 745 

No. 16. For a Design 747 

No. 17. For a Caveat 749 

Oaths. 

No. 18. Oath to Accompany an Application for United States 

Patent 749 

No. 19. Oath to Accompany an Application for United States 

Patent for Design 751 

No. 20. By an Applicant for a Reissue (Inventor) 753 

No. 21. By an Applicant for a Reissue (Assignee) 754 

No. 22. Supplemental Oath to Accompany a Claim for Matter 
Disclosed but not Claimed in an Original Appli- 
cation 755 

No. 23. Oath as to the Loss of Letters Patent 756 

No. 24. Oath of Administrator as to the Loss of Letters Patent . 757 

No. 25. Power of Attorney after Application Filed 757 

No. 26. Revocation of Power of Attorney 758 

No. 27. Amendment '. 759 

Disclaimers. 

No. 28. Disclaimer after Patent 759 

No. 29. Disclaimer during Interference 760 

Appeals and Petitions. 

No. 30. From a Principal Examiner to the Examiners-in-Chief . . 761 
No. 31. From the Examiner in Charge of Interferences to the Ex- 
aminers-in-Chief 762 

No. 32. From the Examiners-in-Chief to the Commissioner in 

Ex Parte Cases 762 



No. 


39, 


No. 


40, 


No. 


41, 


No. 


42. 


No. 


43. 


No. 


44. 


No. 


45, 


No. 


46. 



TABLE OF CONTENTS. XV 

Page 
No. 33. From the Examiners-in-Chief to the Commissioner in 

Interference Cases 763 

No. 34. Petition from a Principal Examiner to the Commissioner. 763 
No. 35. Petition for Copies of Rejected and Abandoned Appli- 
cations 765 

No. 36. Preliminary Statement of Domestic Inventor 766 

No. 37. Preliminary Statement of Foreign Inventor 768 

Assignments. 

No. 38. Of an Entire Interest in an Invention before the Issue 

of Letters Patent 771 

Of the Entire Interest in Letters Patent 772 

Of an Undivided Interest in Letters Patent 773 

Territorial Interest after Grant of Patent 774 

License — Shop-Right 775 

License not Exclusive — with Royalty 776 

Depositions. 

Notice of Taking Testimony 777 

Form of Deposition 779 

Certificate of Officer 780 

Appeals from the Commissioner of Patents 

to the Court of Appeals of th' 

District of Columbia. 

Court Rules. 

No. 8. Argument of Causes and the Preparacion therefor 782 

No. 21. Appeals from the Commissioner of Patents 785 

No. 22. Opinions of Lower Court and Commissioner of Patents 

Made Part of Record 788 

No. 27. Sundays and Legal Holidays 788 

Forms. 

No. 1. Form of Notice of Appeal to the Court of Appeals of 
the District of Columbia in an Ex Parte Case, with 
Reasons of Appeal and Request for Transcript. ... 791 

No. 2. Form of Petition for an Appeal to the Court of Appeals 
of the District of Columbia in an Ex Parte Case. . 792 

No. 3. Form of Notice of Appeal to the Court of Appeals of the 
District of Columbia in an Interference Case, with 
Reasons of Appeal and Request for Transcript. . . . 794 

No. 4. Form of Petition for an Appeal to the Court of Appeals 

of the District of Columbia in an Interference Case .... 795 



XVI 



TABLE OF CONTENTS. 



Appendix C 
Rules of 1870. 



Rules 1-136. 



Page 
. 798 



Appendix D. 

RULES OF 1879. 

Rules 1-218 819 



ANNOTATED RULES OF PRACTICE 

IN THE UNITED STATES 

PATENT OFFICE 

The following rules of practice, duly adopted and 
approved by the Secretary of the Interior, designed 
to be in strict accordance with the Revised Statutes 
relating to the grant of patents for inventions, are 
published for gratuitous distribution. Marginal ref- 
erences to corresponding provisions of the Revised 
Statutes are given for the convenience of the public 
and of the office. 

The observance of the appended forms, in all cases 
to which they may be applicable, is recommended to 
inventors and attorneys. 

Printed copies of the Revised Statutes relating to 
the grant of patents may be obtained on application 
to the Commissioner. 

Thomas Ewing, 
Commissioner of Patents. 

Eev. Stat., sees. 481, 483, 489. 

PAPEES PREPAEED BY THE EXAMINING CORPS. 

Beginning in the summer of 1914, the corps has been assem- 
bled in weekly sessions during the fall and winter months to 
hear papers prepared by members of the corps in exposition 
of the law of patents. 

All but 5 of the 43 divisions have produced papers, and the 
total number of papers will run close to 70. The point has 
been reached where it is difficult to select new subjects for 
treatment. 

These papers have been and are being printed at the expense 
of the examining corps and such attorneys as have subscribed. 
The edition started at 500, but has been increased to meet the 
demand and is now 800. 

1 



'-^-^JtZ^S!'' 



PAPEES BY EXAMINING COEPS. Z 

In addition to the papers read by the corps, we have had 
addresses by Messrs. Melville Church of the Washington bar, 
Frederick P. Fish of the Boston bar, the late J. Nota McGill 
of the Washington bar, and Hon. Arthur C. Dennison, United 
States circuit judge, sixth circuit. 

This office is the experimental station of the patent system. 
Everything in the way of growth or advance in the law either 
originates here or must be applied in its early development in 
granting or refusing patents. The ready response which the 
corps has made to the call for papers is greatly appreciated as 
indicating that it is awake to its duty to study the law and to 
keep abreast with any development therein. 

EEPOET OF THE COMMISSIOISrEK OF PATENTS FOR 1916. 

Such of these papers as are in print may be obtained from 
Mr. Geo. P. Tucker, Eoom 375, U. S. Patent Office. 

The journal of the Patent Office Society is published 
monthly. W. J. Wesseler, Business Manager, 1315 Clifton 
St., Washington, D. C. 

HISTORY. 

"The Act of 1839, sec. IS, conferred on the Commissioner 
of Patents the authority required for the making of regula- 
tions in respect to the taking of evidence to be used in con- 
tested cases before him; this power was further enlarged by 
the Act of March 2, 1861, sec. 1. 

"These provisions were reenacted in section 43 of the Act of 
1870, and are now embodied in section 4905 of the Eevised 
Statutes. 

"The Act of March 2, 1861, sec. 2, established a board of 
examiners-in-chief, and provided that they should be governed 
in their action by the rules to be prescribed by the Commis- 
sioner of Patents. 

"The Act of 1870 greatly enlarged this power, and in its 
nineteenth section authorized the commissioner, subject to the 
approval of the Secretary of the Interior, to establish rules and 
regulations for the conduct of proceedings in the patent office. 

"It is from this enactment, repeated in section 483 of the 
Eevised Statutes, that the accompanying rules derive their 
force." 

Lowery's Annotated Interference Eules. 

1907 Note as to Changes in Rules. 

The rules of date November 1, 1869, are simply signed 
Samuel S. Fisher, Commissioner; the rules of July, 1870, pro- 



6 HISTOEY OP EULES. 

fess to be under the amended laws of 1870, and are signed by 
Commissioner Fisher and approved by J. D. Cox, Secretary of 
the Interior. They are quite similar to the rules of 1869. 
The rules of 1870 served as a model for other editions up 
to the general revision under Commissioner Paine in 1879, 
which latter have served for a model up to the present time, 
except the edition under Commissioner Seymour, which sep- 
arated the laws and rules and matters of mere information and 
advice, and published the laws and rules together. The 
present general form was soon returned to under Commissioner 
Betterworth in 1897. 

The changes in the rules since 1879 have been noted in 
recent editions, these notes taken from the rules of 1907 are 
as follows : 

General revision, December 1, 1879, to take effect Jan- 
, uary 1, 1880. 

First revised edition, September 1, 1880, under which Eules 
20, 30, 31, 89, par. (1) of 50, 55, 94, 101, 111, 116, 117, 118, 
119, 120, 134, 144, 160, 171, and 209 were amended. 

Second revised edition, April 15, 1882, under which Eules 
39, 46, 85, 86, 94, 124, and 171 were amended, and Forms 17 
and 18 consolidated and amended as Form 17. 

Third revised edition, February 1, 1883, under which Eules 
20, 26, 39, 47, and 59 were amended, and notes * * inserted 
at bottom of pages 9 and 17. 

Fourth revised edition, November 15, 1883, under which 
Eules 20, 26, and 165 were amended. 

Fifth revised edition, March 1, 1884, under which Eules 26, 
62, and 209, and Form 37 were amended. 

Sixth revised edition, August 12, 1884, under which Eules 
35, 67, 137, and 138 were amended. 

Seventh revised edition, March 3, 1885, under which Eules 
53, 94, 97, 102, 104, 105, 106, 107, 116, 119, 126, 157, and 
171 were amended. 

Eighth revised edition, November 16, 1885, under which 
Eules 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 44, 45, 47, 86^ 
140, 144, and 145 were- amended. 

Ninth revised edition, July 13, 1886, under which Eules 40, 
67, 74, and 77 were amended. 

Tenth revised edition, March 9, 1887, under which Eule 171 
and Form 21 were amended and Forms 19, 52, and 53 were 
inserted. 

Eleventh revised edition, April 18, 1888 (being a general 
revision), under which new Eules 44, 2d and 3d pars of 46, 2d 
par. of 77, 105, 2d par. of 111, 182, 157, 166, 228, and 229- 



HISTORY OF RULES. 



were inserted, and the numbering of the rules changed to cor- 
respond therewith. 

Twelfth revised edition, July 1, 1891, under which Rules 
17, 51, 52, 83, 84, and 318 were amended, and Form 36 
changed. 

Thirteenth revised edition, April 1, 1893, under which Eules 
34, 36, 31, 48, 7th par. of 51, 4th par. of 63, 66, 70, 73, 77, 
88, 97, 116, 119, 134, 135, 151, 3d and 8th pars, of 154, 163, 
171, 305, 318, 333, 335, and Forms 13 and 17 were amended. 

Fourteenth revised edition, February 9, 1897, under which 
the rules were substantially rewritten, reduced in number to 
eighty-eight, and rearranged, and the forms were revised 
throughout. 

Fifteenth revised edition, June 18, 1897, under which the 
rules of the thirteenth revised edition, April 1, 1893, were 
restored, except Eules 181-194, inclusive, relating to extensions, 
and Rules 333 and 338. Rules 13, 17, 30, 35, 46, 48, 3d par. 
of 50, 55, 56, 61, 63, 64, 66, 71, 81, 83, 84, 91, 97, 116, 119, 
1st par. of 133, 1st par. of 134, 137, 138, 139, 135, 145-150, 
inclusive, 154, 156, 163, 163, 169, 179, 318, 331, 336, and 339 
of the thirteenth revised edition, and Forms 1, 8, 9, 15, 30, 
and 48 of the fourteenth revised edition were amended. 

The changes in tlie numbering of the rules in the thirteenth 
edition (April 1, 1893), were as follows in the fifteenth edi- 
tion, of June 18, 1897 : 



No. in 


No. in 


No. in 


No. in 


No. in 


No. in 


edition 


edition 


edition 


edition 


edition 


edition 


of April 


of June 


of April 


of June 


of April 


of June 


1, 1892 


18,1897 


1, 1892 


18, 1897 


1, 1892 


18, 1897 


195 


181 


206 


192 


217 


203 


196 


182 


207 


193 


218 


204 


197 


183 


208 


194 


219 


205 


198 


184 


209 


195 


220 


206 


199 


185 


210 


196 


221 


207 


200 


186 


211 


197 


222 


208 


201 


187 


212 


198 


224 


209 


202 


188 


213 


199 


225 


210 


203 


189 


214 


200 


226 


211 


204 


190 


215 


201 


227 


212 


205 


191 


216 


202 


229 


213 



Fifteenth revised edition, June 18, 1897 (second edition, 
December 1, 1897), contains an appendix with amendments 
to Rules 34 (first paragraph), 39, 31 (last paragraph), 39 
(section 1), 46 (first paragraph), 63 (second paragraph), 75, 
77 (first and second paragraphs), 94, 166, 168, 171 (first 
paragraph), and 198. 



HISTORY OF RULES. 

Sixteenth revised edition^ July 18^ 1899, under which Eules 
9, 18, 25, 33, 41, 46, 47, 60, 77, 78, 91, 96, 107, 110, 112, 124, 
128, 149, 154, 156, and 162 are amended, Enle 214 added, and 
in which the changes noted in the appendix to the last edi- 
tion and those appearing in the Official Gazette since the pub- 
lication of the fifteenth edition have been incorporated in the 
rules. 

Forms 1 to 17, and 37 are amended. Form 7 added, and the 
forms renumbered as necessary. 

The first reprint, February 28, 1900, of the sixteenth edi- 
tion embodies "changes in the rules appearing in tlie Official 
Gazette since the publication of that edition, which are indi- 
cated by capital letters, also certain changes in Forms 16, 18, 
29, 30, 31, 32, 35, and 45, and chart for guidance of draftsmen. 

The second reprint, March 30, 1901, of the sixteenth edition 
changes the requirements of Rule 162 in regard to the num- 
ber of copies of printed testimony to be furnished. 

The third reprint, January 4, 1902, of the sixteenth edition 
has no changes except the cancellation of the paragraphs in 
Eules 18, 154, and 204, relating to revenue stamps. 

Seventeenth revised edition, January 2, 1903, under which 
Rules 24, 30, 31, 48, 50, 51 (7), 60, 68, 79, 81, 84, 97, 124, 
125, 151, 170, 173, 197 (2), 204, and Forms 16, 18, and 21 
are amended. 

The first reprint, April 15, 1903, of the seventeenth edition 
embodies changes in Rules 24, 29, 46, 47, 48, 79, 110, 114, 
184, 189, the- cancellation of Riile 186, and the numbering of 
the rules to correspond therewith. 

The second reprint, January 1, 1904, of the seventeenth edi- 
tion embodies changes in Eules 25 and 81, the division of Eule 
81, the latter portion being made Eule 82, the renumbering 
of old Eules 82 and 83 as 83 and 84, and the cancellation of 
old Eule 84; changes in Eules 96, 110, and in 203 in the 
matter of the price of Eosters of Attorneys, also in Form 16. 

Eighteenth revised edition, July 2, 1904, under which Eules 
41, 133, 134, 135, and 145, and Form 18 are amended. 

Nineteenth revised edition, February 28, 1905, under which 
Eules 17, 46, 51, 52, 86, 110, 122, 124, 203, and 206 are 
amended. 

The first reprint of the nineteenth revised edition Septem- 
ber 1, 1905, has no changes. 

The second reprint, July 31, 1906, of the nineteenth edition 
embodies changes in Eules 46, 109, 114, 122, 124, 130, 141, 
and 162. 



COISTSTRUCTIONS UsT GENERAL. D 

The third reprint, October 15, 1906, of the nineteenth re- 
vised edition has no changes. 

Lowery's Annotated Interference Rules. 

"The conclusiveness of the Patent Office Eules has been 
considered in — Arnold v. Bishop, 1841, Cranch, Ch, J., 1 
MacA. Patent Cases; A^ichols v. Harris, 1854, Morsell, J., 1 
MacA; P. C. 3028 : O'Hara v. Hawes, 1859, Morsell, J., Laws. 
Digest 96. 

"The authority of these rules as a construction of the statute 
is stated in Arnold v. Bishop, 1841, Cranch, Ch. J., 1 MacA. 
Pat. Cases 27; Mchols v. Harris, 1854, Morsell, J., ibid. 302; 
Dyson, ex parte, 1860, Dunlap, 1 ibid. 96." 

CONSTRUCTIONS. 

The approval of the Secretary of the Interior being neces- 
sary to the adoption and establishment of a rule, we think 
the contrary would be true that where a rule of procedure is 
in force it can only be repealed, modified or suspended by the 
commissioner, with the approval of the Secretary of the In- 
terior. (Question not before the court, however.) 
Mill V. Midgley, 136 0. G. 1534. 

It is true that the examiner's decision was rendered upon 
June 4, 1906; that the rule was not amended until June 12, 
1906, and that the amendment was not promulgated until 
June 19, 1906. This appeal was not filed, however, until 
June 22, 1906, and it is clearly barred by the amended rule. 

It is well settled that alterations in procedure and practice 
are retrospective in effect unless there is some good reason 
against it. 

Wheeler v. Seeberger, 125 0. O. 2363. 

Eule 86 has the force and effect of a statute while it stands. 
Pender, 123 0. G. 2975. 

Administrative officers should regard the opinions of the 
attorney-general upon questions referred to him for his opin- 
ion under section 356 of the Eevised Statutes as law until 
either witlidrawn by the attorney-general or overruled by the 
courts. (See 20 Op. Atty.-Gen., pp. 648-655, 1895; 20 Op. 
Atty.-Gen., 719, 1894; also Berger v. U. S., 36 Ct. Claims, 
247, 1901.) 

Ex parte Theodare and Carl Weil, 122 0. G. 352. 

Change of practice not retroactive. 
J^aef, 115 0. G. 2135. 

In the actions upon cases both by the office and by appli- 



/ CONSTEUCTIONS I]Sr GENERAIi. 

cants the reasons for the rules of procedure should be kept in 
mind, and they should not be lost sight of by too close atten- 
tion to supposed technical requirements as to form. 
Murray, 111 0. G. 3491. 
If there be no such inconsistency with the express provisions 
of the statutes, the rules are valid and have the force and 
effect of law. 

U. S. ex. rel. Steinmetz v. Allen, Com., 1903 C. D. 578, 
102 0. G. 231. 
Eules of practice should only be applied to cases after their 
adoption. 

Pfaudler, '83 C. D. 1-3. 
For the above purpose a divisional application takes the 
date of the original. 

Baker, 101 0. G. 2824. 
The following case relates to this subject: 

Donning v. Pisher, 125 0. G. 2765. 
That the rule having been adopted while the case was 
pending applies to it, is clear. 

Farquhar, 89 0. G. 706; Hawkes, 69 0. G. D. 37. See, 
however, the case of Stone v. Greaves, 1880 C. D. 70. 
The action of the German Patent Office considered. 

Bedford et al. v. Duell, Com., 1899 C. D. 357, 87 0. G. 
1611. 
It is a well settled principle of law that alterations of pro- 
cedure or practice are always retrospective unless there be 
some good reason against it. 

MacMaster, 1897 C. D. 51, 80 0. G. 1475. 
Eule 207 should not be held to apply to certificates of de- 
posit issued prior to the approval of the rule. 
Griffith, 1897 C. D. 46, 80 0. G. 1126. 
I think that under section 483 of the Eevised Statutes, I 
have authority by an order made with the approval of the 
Secretary of the Interior to authorize him to introduce such 
affidavits. 

Bodgers, 1879 C. D. 333, 16 0. G. 1233. 
To construe a rule of the Patent Office is at least a quasi- 
judicial act, and hence an appeal from the decision of the 
Commissioner to the Secretary of the Interior, based upon 
an alleged disregard of a certain rule must be dismissed. 
Warner v. Stimson, 1897 CD. 199, 78 0. G. 1901. 
The attorney general will not advise the Commissioner how 
to decide a case pending before him on appeal when he con- 
ceives that the parties appealing have a right to expect the 
personal judgment of the Commissioner. 



CONSTRUCTIONS IN GENEEAL. O 

Ex parte H. Manske & Co., 1893 C. D. 137, 63 0. G. 
1687. 
In view of the practice that has been allowed to obtain, the 
public should have due notice of the adoption and enforcement 
of the new rule of practice. 

Wieg-and, 1891 C. D. 249, 56 0. G. 803. 
Congress, in creating the Patent Office has, by express legis- 
lation, given that Office the power to enact rules for its con- 
duct. These rules, i'f they are within the power of the Office, 
are just as authoritive as the laws of Congress itself, if within 
the limitations of its powers. 

U. S. V. Marble Com., etc., 22 0. G. 1365; Dec. of Sec. 
Ex parte Pfandler, 23 0. G. 629. 
The rules of the Office have the force of law so long as 
they remain unrepealed, and are as binding upon its officials 
as they are upon the general public. 
Smoot, 1877 C. D. 51. 
The Commissioner of Patents exercising the power con- 
ferred, established among others of the Eules of Practice, 
Rule 41. It thereby becomes a rule of procedure, and consti- 
tuted, in part, the Powers of the Primary Examiner. In 
other words, it became an authority to those officers, and 
necessarily an authority under the United States. 

U. S. ex rel. Steinmetz v. Allen, Co., 24 Supreme Ct. 

R. 420. 
Eaving, Commissioner, v. TJ. S. ex rel. The Fowler Car 
Co., 226 0. G. 700. 
Cases passing on the subject matter of this rule. 

Helbig, 131 0. G. 1687; Balzer, 1902 C. D. 470, 101 0. 
G. 2824; Crown Cork & Seal Co., etc., v. Aluminum 
Stopper Co., 96 0. G. 2530; Kroeninger. 1900 C. D. 
84, 91 0. G. 2002 ; Bedford v. Duell, Com., 1899 C. D. 
357, 87 0. G. 1611; Griffith. 1897 C. D. 46, 80 0. G. 
1126; Higgins, 1897 C. D. 73, 80 0. G. 2037; Smoot, 
1877 C. D. 51, 11 0. G. 1010; Murray, 111 0. G. 2491. 

Appeal to Secretary of the Interior. 

Refusal of appeal under Rule 122 because substantially for 
unappealable matter under Rule 122, not appealable to Secre- 
tary. 

Blackmore v. Hall, 120 0. G. 1477. 

The Secretary has no authority to interfere to determine 
whether or not anyone may be a proper party to an inter- 
ference. 



9 TRANSACTIONS IN WRITING. Eule 1 

Jenkins v. Jenkins and Armat, 1897 C. D. 203, 78 0. 
G. 190.2. 
Secretary of the Interior has jurisdiction of appeals arising 
from Eule 201. 

Cote Company, 1893 C. D. 138, 65 0. G. 1915. 
jSTone from refusal to admit amended preliminary state- 
ment. 

Noakes, 1892 C. D. 243, 60 0. G. 575. 
"The Jurisdiction of the Secretary of the Interior on Ap- 
peal from Commissioner" considered by the Supreme Court. 
Betterworth v. Hoe, 29 0. G. 615, 112 W. S. 50-60. 
Citing this rule. 

Casey (in re), 1902 C. D. 492, 101 0. G. 2567. 
See Journal of the Patent Office Society, Vol. 1, Nos. 8 
and 9. 

CORRESPONDENCE AND INTERVIEWS. 
Rule 1. Business to be Transacted in Writing. 

All business with the office should be transacted in 
writing. Unless by the consent of all parties, the ac- 
tion of the office will be based exclusively on the writ- 
ten record. No attention will be paid to any alleged 
oral promise, stipulation, or understanding in rela- 
tion to which there is a disagreement or doubt. 

CONSTRUCTIONS. 

No attention given to an alleged verbal agreement between 
attorneys and examiner. 
• W'. H. McLellan, 72 C. D. 152. 
Postal Authorities are not agents of the Patent Office. 

Eavelli, 130 0. G. 982; Meier, 136 0. G. 657; Kauer- 
mann, 157 0. G. 207; Cannon, 94 0. G. 2165; Dempsey, 
132 0. G. 1074. 
P. 0. agent of applicant. 

O'Brien, 181 0. G. 1073. 
It is not good practice to base action in a case upon oral 
understanding or agreements without stating upon the record 
the reasons for the action. 

Hunter, 116 0. G. 1731; See Kroeninger, 1900 C. D. 84, 
91 0. G. 2002. 



Rule 2 CORRESPONDENCE. 10 

Rule 2. Correspondence to be in the Name of the 
Commissioner. 

All office letters must be sent in the name of the 
** Commissioner of Patents." All letters and other 
communications intended for the office must be ad- 
dressed to him; if addressed to any of the other offi- 
cers, they will ordinarily be returned. 

Rule 3. All Charges to be Prepaid. 

Express charges, freight, postage, and all other 
charges on matter sent to the Patent Office must be 
prepaid in full; otherwise it will not be received. 

Rule 4. Personal Attendance of Applicants Unneces- 
sary. 

The personal attendance of applicants at the Patent 
Office is unnecessary. Their business can be trans- 
acted by correspondence. 

Rule 5. Correspondence with Assignees. 

The assignee of the entire interest of an invention 
is entitled to hold correspondence with the office to 
the exclusion of the inventor, (See Rule 20.) 

CONSTRUCTIONS. 

See Rules 6, 26, 183. 

It is not necessary that the assignment should contain a re- 
quest to issue to the assignee. 

Hill and Hill, 206 0. G. 1437. 
The Patent Office will not consider disputes. 

Patridge, 183 0. G. 781. 
An option, though exclusive, not recognized under this rule. 

Newman, 183 0. G. 320. 
Must be an assignee of the legal title and a request to issue 
the patent to the assignee necessary. 
Steinford, 138 6. G. 527. 
The validity of this rule will not be considered by the secre- 
tary of the interior in a collateral attack. 
Adams, 129 0. G. 1612. 



11 ASSIGNEES. Rule 5 

The inventor should be excluded when the assignee of the 
entire interest so requests without the necessity of a showing 
of reasons by the assignee why such action should be taken. 
(MacLaughlin, 55 0. G. 864, overruled to this extent.) 

The Kellop Switchboard & Supply Company, 123 0. G. 
3310. 
Also cites Duncan and Duncan, 109 0. G. 805. 
The assignee of the entire interest wrote a letter to the office 
stating that the invention had been in public use more than two 
years prior to the application. Held sufficient to warrant re- 
fusing the patent on the ground of public use. 
Cumings, 114 0. G. 2090. 
The rule laid down in ex parte McTammany, 93 0. G. 751, 
is modified to this extent that where there are conflicting assign- 
ments of an application which is involved in interference the 
first assignee, if he intervenes, will be recognized to prosecute 
that application until his assignment is set aside. 
Sparks v. Small, 113 0. G. 1970-1-2. 
Where an applicant has two applications for the same in- 
vention pending, one of which is assigned, held that he may 
inspect the assigned application in order to properly limit the 
other. 

MacLaughlin, 1891 C. D. 68, 55 0. G. 864. 
Where an ajoplication has been filed and assigned, the as- 
signee may prosecute the application just as if a subsequent 
application by the same inventor had not been filed. 
McLaughlin, 55 0. G. 863, 1891 C. D. 67. 
Until an assignee of the entire interest asserts his right to 
hold correspondence with the office to the exclusion of the 
inventor, it is the practice of the office, except in exceptional 
cases, to recognize a correspondingly exclusive right on the 
part of the attorney of the inventor. 

Baker, 1889 C. D. 232, 49 0. G. 1363. 
It is important that the office should require the assignee of 
the entire interest before a patent is issued to join in the 
power of attorney granted by the inventor or to appoint some 
attorney to represent their interests. 
Ackerman, 1880 C. D. 131. 
This refers to a legal interest, and one having the right to 
have the entire interest assigned to- him upon the happening 
of a condition, as the granting of the patent, is not entitled 
to appoint the attorney. 

Martin v. Olney, 1876 C. D. 124, 9 0. G. 1107. 
Cases passing on the subject-matter of this rule. 

Stebler, 177 0. G. 1044; Loelertrand v. Cornwall, 148 0. 



Rule 6 INVENTOE AND ASSIGNEE. 12 

G. 1344; Duncan & Duncan, 1904 C. D. , 109 0. 

G. 805; Bryant, 1902 C. D. 334, 100 0. G. 3773. 

Rule 6. Correspondence with Inventor and Assignee. 

When there has been an assignment of an undivided 
part of an invention, amendments and other actions 
requiring the signature of the inventor must also 
receive the written assent of the assignee; but official 
letters will only be sent to the post-office address of 
the inventor, unless he shall otherwise direct. 

CONSTRUCTIONS. 

See notes to Rules 5, 31, 26, and 183. 

In issuing either original or reissue patents, grantees of 
interests therein shall not be considered to be other than as- 
signees because of an outstanding license, whether exclusive or 
not, and the patents shall issue to the same parties as they 
would if such licenses did not exist. 
Dudley, 187 0. G. 829. 
An appeal does not lie to the Secretary of the Interior from 
a decision of the Commissioner, in reference to assignments. 
In re Wurtz, Jr., 123 0. G. 320. 
Until the assignment has been set aside by a competent 
tribunal the oflSce must give it full effect thereto. (See note 
to R. 25.) 

In re Wurtz, Jr., 123 0. G. 320. 
A petition to allow the assignee of a part interest to prose- 
cute the case is proper, when, and only when, it appears nec- 
essary to prevent abandonment. 
Fitzhugh, 120 0. G. 660. 
It is the settled practice not to permit the assignee of a 
part interest, upon his mere demand, to prosecute the applica- 
tion to the exclusion of the inventor. On the contrary, the 
inventor is permitted to prosecute the application to the exclu- 
sion of everyone save the assignee of the entire interest. 
Sandstrom, 113 0. G. 850. 
The office has no jurisdiction to investigate and decide dis- 
puted questions of title, since these matters are left to the 
courts. It acts in a ministerial capacity in regard to assign- 
ments and must follow the record without attempting to adju- 
dicate the rights of the parties on disputed questions of fact. 
Turner, 1902 C. D. 329, 100 0. G. 2603. 



13 INVENTOR AND ASSIGNEE. Rule 6 

Affidavits alone not sufficient to establish the fact of assign- 
ment. 

Collins, 1902 C. D. 334, 100 0. G. 2601. 
A licensee is not entitled to access to pajDers. 

Adam, 1900 C. D. 106, 92 0. G. 190. 
The assignee of an entire interest may prosecute an inter- 
ference on behalf of the application of his principal who died 
while the interference proceedings were pending. 
Chase v. Eyder, 1892 C. D. 219, 61 0. G. 885. 
The Commissioner of Patents has no Judicial authority to 
take action in disputed questions of title under an assignment, 
nor is it ordinarily within his discretion to interfere to pre- 
vent the revocation of a power of attorney by an applicant. 
Gallatin, 1892 C. D. 106, 59 0. G. 1104. 
The assignee of an inventor who died before making his 
application has no standing as an applicant before the Patent 
Office, and this is true where the application sought to be 
made by the assignee is a division of one properly filed by the 
inventor. 

Stevens, 1892 C. D. 87, 59 0. G. 299. 
Where one of two joint applicants subsequently files a sole 
application for the same improvement, a power of attorney, 
executed by the other of the joint applicants and their as- 
signee, will be accepted by this office as sufficient. 

Ex parte Benjamin & Bailey, 1892 C. D. 85, 59 0. G. 298. 
A party who bases his rights as an assignee upon an instru- 
ment recorded in the Patent Office before application was made 
and not specifically identifying the invention will not be per- 
mitted to examine the files because such an instrument is not 
an assignment, but a mere executory agreement. 
Lorentz, 1892 C. .D. 77, 59 0. G. 158. 
An instrument granting all right, title, and interest in the 
invention except as to a certain combination set forth in the 
application, is not an assignment, and an attorney appointed 
by a person holding such an instrument will not be recognized 
in the prosecution of the case. 
Hunter, 1891 C. D. 122. 
The grantee of a territorial interest is not within the rule. 

Funston, 1889 C. D. 223, 49 0. G. 1044. 
If the assignee does not assert his right the attorney ap- 
pointed by the inventor should be recognized. 
Baker, 1889 C. D. 232, 49 0. G. 1363. 
The commissioner has no equitable jurisdiction over the 



Rule 7 COEEESPONDENCE WITH ATTOENEY. 14 

rights of parties claiming under assignments and grants of in- 
ventions and patents. 

McDonough v. Gray, v. Bell, v. Edison, 1889 C. D. 9, 46 
0. G. 1245. 

The requirement that both parties shall sign '"^amendments 
and other actions" applies only where the personal signature 
of the inventor is required, such as supplementary oaths, dis- 
claimer, concession of priority, etc. 

Ackerman, 1880 C. D. 131, 17-18 0. G. 
See Graham, 112 0. G. 1752. 
See note to Eule 26. 

Chillingsworth, 1897 C. D. 72, 80 0. G. 1892. 
See note to Rule 20. 

Anderson, 1893 C. D. 12, 62 0. G. 449. 
Seven instances where the signature of the assignee of an 
undivided part of an invention is required: 

Journal of the Patent Office Society, vol. 1, No. 1, pp. 
26-27. 

Rule 7. Correspondence with Attorney. 

When an attorney shall have filed his power of 
attorney, duly executed, the correspondence will be 
held with him. 

A double correspondence with the inventor and an 
assignee, or with a principal and his attorney, or with 
two attorneys, can not generally be allowed. 

CONSTRUCTIONS. 

Where a power of attorney is given to a party who is not 
registered. 

Order No. 2047, April 30, 1913. 
Where perpetual motion is involved. 

Notice of January 30, 1918. 
A principal attorney has a right to amend over his own sig- 
nature, but it is best that the case should be conducted in the 
name of either the principal of associate alone. 
Eggan, 172 0. G. 1091. 
Where two firms are nominated as principal attorney, one 
of which is a resident of Washington, in the absence of any 
direction to the contrary correspondence should be with the 
latter firm. 

Jewett, 1887 C. D. 17, 38 0. G. 781. 
The nomination of an "associate attorney," made by appli- 



15 PEOTESTS. Rule 11 

cant without the consent of the principal attorney, can not be 
recognized or acted upon. 

Eanks, 1887 C. D. 7, 38 0. G. 339. 
Double correspondence with principal and associate attorneys 
not allowed. 

Banks, 1887 C. D. 7, 38 0. G. 329. 

Rule 8. Separate Letters. 

A separate letter should in every case be written in 
relation to each distinct subject of inquiry or appli- 
cation. Assignments for record, final fees, and orders 
for copies or abstracts must be sent to the office in 
separate letters. 

Papers sent in violation of this rule will be returned. 

Rule 9. Letters Relating to Applications. 

When a letter concerns an application, it should 
state the name of the applicant, the title of the inven- 
tion, the serial number of the application (see Rule 
31), and the date of filing the same (see Rule 32). 

CONSTRUCTIONS. 

Applies to oaths. They should properly identify the applica- 
tion. 

Heusch, 1899 C. D. 173, 88 0. G. 1703. 

Rule 10. Letters Relating to Patents. 

When the letter concerns a patent, it should state 
the name of the patentee, the title of the invention, 
aiid the number and date of the patent. 

Rule 11. Protests. 

No attention will be paid to unverified ex parte 
statements or protests of persons concerning pending 
applications to which they are not parties, unless 
information of the pendency of these applications shall 
have been voluntarily communicated by the applicants. 



Rule 11 PROTESTS. 16 

CONSTRUCTIONS. 

See Eules 12 (Eule 128 of 1870) and Eule 15. 
If one does not wish to make the claims suggested to him 
under Eule 96, he can not prevent such claims from being 
allowed to others. 

Bryant, Wolcott, and Davidson, 121 0. G. 2663. 
Question first raised in appeal to the Commissioner. The 
question of patentability of the issue is an ex parte one, and 
Hedlund has no right at this time to argue the question before 
any of the tribunals of this office. His protest will be consid- 
ered by the Primary Examiner when the respective applications 
come before him for ex parte jaction. Hedlund has no right 
to argue the question of the pertenancy of the references 
against C's claims, and the motion to strike the brief from 
the files is therefore granted. 

Hedlund v. Curtis, 114 0. G. 544-5. 
A party defeated in an interference can not be heard to 
protest against the grant of a patent to his opponents, on the 
ground that they were falsely represented as joint inventors. 
Eobin V. Muller & Bonnet, 113 0. G. 2506. 
After the determination of an interference a protest by the 
unsuccessful party against the issue of a patent to the success- 
ful party will not be entertained. 

Kempshall v. Seiberling, 107 0. G. 541 ; see also Cole- 
man, 107 0. G. 1662, and Green v. Hall v. Siemens v. 
Field, 1889 C. D. 166, 470 0. G. 1663. 
A mandamus commanding the commissioner of patents to 
institute public use proceedings refused for want of a legal 
interest in the petitioner. 

The TJ. S. of America ex rel. ISTat. Phonograph Co. v. 
Allen, Commissioner of Pat., 1902 C. D. 571, 101 0. G. 
1133. 
Where a protestant against the issue of a patent only filed 
an affidavit describing a device which he alleged had been in 
public use more than two years before the applicant had filed 
his application and failed to file an exhibit, model, or draw- 
ing, clearly showing the nature of the device so alleged to have 
been in public use. Held that such an affidavit was insufficient 
to warrant public use proceedings. 

Fay V. Conrad, Com., 1893^" C. D. 129, 65 0. G. 751. 
A protest against the issuance of a patent to an applicant 
is fatally defective unless it embodies something equivalent 
to a distinct denial of the applicant's sworn statement of in- 
vention. 

Eiley v. Barnard, 1892 C. D. 134, 59 0. G. 1921. 



17 MAIL. Rule 12 

The fact that an applicant has incorporated a notice of his 
intention to apply for a patent in an amendment to a former 
application taken notice of. 

See Dec. Sec, 23 0. G. 629. 

A party to an interference may protest against the grant- 
ing of a patent because of abandonment by public use. 

Hidges V. Daniels, 1880 C. D. 10, 17 0. G. 152; Eehear- 
ing, 1880 C. D. 64; Fowler v. Benton, 1180 C. D. 39, 
17 0. G. 266. 

Formerly the rules of the patent office interdicted the con- 
sideration by the commissioner of any ex parte protests against 
the issue of letters patent to an applicant. The rule has dis- 
appeared. The rule requiring pending applications to be kept 
in secrecy must be duly considered in the adoption of any 
general rule for the disposition of ex parte protests against 
the issue of letters patent. I have concluded to consider no 
such protests, except upon legitimate proof showing conclu- 
sively or presumptively that the application against which the- 
protest is directed has been, or is about to be filed. The proof 
must rest upon disclosures made by the applicant himself, or 
upon facts otherwise lawfully discovered. 
Neale, 1879 C. D. 11, 15 0. G. 511. 

The results of the proceedings in interference cases under 
the old rules, allowing an appeal from a decision affirming 
patent ability, were beneficial to the public, for it often pre- 
A'ented the issue of worthless patents. But the same results 
are obtainable by ex parte protests against the grant of patents 
subject to the restrictions of Eule 12, which protests are al- 
ways in order. 

Such protest would be entertained by the Commissioner 
either forthwith or after the determination of the interference, 
or at such other time as justice might seem to require in the 
particular case. 

Fowler v. Benton, 80 C. D. 39, 17 0. G. 266. 
See Wilder, 128 0. G. 455. 

Rule 12. Mail. 

Mail reaching the post office at Washington, D. C, 
Tip to 4.30 p. m, on week days, excepting holidays, and 
1 p. m. on half holidays, is entered as received in the 
Patent Office on the day it reaches the post office. 

Special-delivery letters and other papers may be 



Rule 13 INTERVIEWS WITH EXAMINEES. 18 

deposited in a box provided at the watchman's desk 
at the F Street entrance of the Patent Office up to 
midnight on week days, including holidays, and all 
papers deposited therein are entered as received in 
the Patent Office on the day of deposit. 

Letters received at the office will be answered, and 
orders for printed copies filled, without unnecessary 
delay. Telegrams, if not received before 3 o'clock 
p. m., can not ordinarily be answered until the follow- 
ing day. 

"On weekdays, including holidays," inserted after "midnight" 
by amendment, see Gazette of June 30, 1916, 228 0. G. 1. 

Rule 13. Interviews with Examiners. 

Interviews with examiners concerning applications 
and other matters pending before the office must be 
had in the examiners' rooms at such times, within 
office hours, as the respective examiners may desig- 
nate, in the absence of the primary examiners, with 
the assistant in charge. Interviews will not 'be per- 
mitted at any other time or place without the written 
authority of the Commissioner. Interviews for the 
discussion of pending applications will not be had 
prior to the first official action thereon. 

INFORMATION TO CORRESPONDENTS. 

Rule 14. Subjects on which Information can not be 
Given. 

The office can not respond to inquiries as to the nov- 
elty of an alleged invention in advance of the filing of 
an application for a patent, nor to inquiries pro- 
pounded with a view to ascertaining whether any 
alleged improvements have been patented, and, if so, 
to whom; nor can it act as an expounder of the patent 
law, nor as counsellor for individuals, except as to 
questions arising within the office. 



19 APPLiCATioisrs IN SECEECY. Rule 15 

Of the propriety of raaking an application for a pat- 
ent, the inventor must judge for himself. The office 
is open to him, and its records and models pertaining 
to all patents granted may be inspected either by him- 
self or by any attorney or expert he may call to his 
aid, and its reports are widely distributed. (See Rule 
196.) Further than this the office can render him no 
assistance until his case comes regularly before it in 
the manner prescribed by law. A copy of the rules, 
with this section marked, sent to the individual mak- 
ing an inquiry of the character referred to, is in- 
tended as a respectful answer by the office. 

Examiners' digests are not open to public inspec- 
tion. 

Eev. Stat., sees. 475, 481, 484, 4883. 
Rule 15. Pending Applications Kept in Secrecy. 

Pending applications are preserved in secrecy. No 
information will be given, without authority, respect- 
ing the filing by any particular person of an applica- 
tion for a patent or for the reissue of a patent, the 
pendency of any particular case before the office, or 
the subject matter of any particular application, un- 
less it shall be necessary to the proper conduct of 
business before the office, as provided by Rules* 97, 
103, and 108. 

CONSTRUCTIONS. 

Authorized officers of the army and navy may inspect in the 
public interest. 

Amendment, 247 0. G. 249. 
This rule in force since 1851. "The rule is such a one 
as the statute authorizes the department to make and for that 
reason has the force and effect of law. 

Decision of the Secretary of the Interior, Pfaudler, 1883 
C. D. 1, 23 0. G. 269. 
Since the prior application is a part of the office records 



Rule 15 APPLICATIONS IN SECRECY. 20 

and can be inspected at any time by its tribunals, G may 
present argument without seeing F's prior application. 
Felming v. Gardner, 338 0. G. 1457. 
The fact that a party stated that he found out that appli- 
cations were pending through the application of one W in a 
petition for public use proceedings gives applicant's opponents 
no right of access to W's iiles. 

Deere v. Mariser Co., 176 0. G. 373. 
Eule not inconsistent with Rule 43. 

Summers, 160 0. G. 1039. 
A refusal to allow access to a pending application until a 
matter of title between the parties is settled in the courts, is 
an exercise of a proper discretion and will not be controlled 
by mandamus. 

Moore, Com., v. U. S. ex rel. Boyer, 138 0. G. 530; see 
also (S. C. D. C), 138 0..G. 539. 
The fact that an application is referred to incidentally dur- 
ing an interference but is not relied upon in any way does not 
give an opponent a right to see the files. 

Lindstrom v. Lipschultz, 131 0. G. 1977. 
All the reasons for preserving original applications in secrecy 
do not exist in reissue applications, and therefore the same 
character of showing is not required to warrant furnishing 
copies. 

A reissue applicant has no secret invention to be concealed 
from the public, since he has necessarily disclosed it in his 
patent. All that can be concealed in a reissue case is the pro- 
cedure and new claims made. 

The ISTew York Woven Wire Mattress Company, 131 0. G. 
688. 
ISTo violation of this rule to permit cross-references between 
two .applications owned by the same party. 
Kellogg, 130 0. G. 3754. 
When an interference has been dissolved neither party has 
a right to be heard upon the consideration of claims subse- 
quently presented by the third party. 

Meigs, Hughes and Slout v. Gordon, 116 0. G. 1184. 
A party derives no right to see an application from the fact 
that he was at one time in interference with it. After the 
conclusion of the interference he stands upon the same foot- 
ing as a third party and must establish his right derived from 
other sources. 

The fact that he is about to commence suit for infringement 
against his opponent in the interference proceeding is not suffi- 
cient, an order or certificate from the court should be required. 



21 APPLICATIONS IN SECEECY. RuIg 15 

Mygatt, 1905 C. D. 110, 115 0. G. 1066. 

The office should not under any technical construction of 

the rule of secrecy conceal from the public the proceedings 

which lead to the grant of a patent. When a patent is granted, 

all proceedings leading to its grant should be public property. 

Doman, 1905 C. D. 101, 115 0. G. 804. 

Where a patent is granted con-taining the statement that it 
is a continuation in part of a prior application, access to such 
prior application will not be granted to strangers without a 
proper showing of interest and without giving the applicant 
an opportunity to oppose such action, particularly where such 
prior application is still pending, and it appears that its sub- 
ject-matter is not identical with that of the patent. 

Wixford, 120 0. G. 1166, distinguished from ex parte Dor- 
man, 115 0. G. 804. 

Applications are in general preserved in secrecy. Exceptions 
are made where the applicant waives his right to its enforce- 
ment by reference to his application in a patent or in an inter- 
ference proceeding or suit (109 0. G. .1070, 112 0. G. 1480, 
48 0. G. 1263), or where a judge certifies that it is probably 
material and relevant evidence (109 0. G. 1885, 110 0. G. 
860). Exceptions to the rule are not made because the appli- 
cation has been in interference (96 0. G. 1238). 

Heard, 1905 C. D. 66, 114 0. G. 2381; Brown, 115 0. 
G. 248. 

Conditions may arise, however, to justify the removal of the 
bar of secrecy from persons making a showing of interest in 
the invention disclosed in such application. 

As in the declaration of an interference, or the assignment 
of the invention, the commissioner, in his discretion, may throw 
the applications open to the inspection of parties in interest. 
In this particular case the petitioner has filed an order from 
the court, and it should be respected, provided, of course, the 
records of the office indicate that the court was not deceived 
as to facts which induced it to issue the order. 

Davis & Eoesh Temperature Controlling Company, 114 
0. G. 1549. 

If an applicant refers to his application in his testimony 
his opponent may have access to the files of said application. 
Patterson, 109 0. G. 1070. 

The Examiner of Interferences referred to applications of 
one of the parties outside of the record as having a bearing 
on the question of diligence. Held to be improper. 

Under the rules a party ordinarily has the right to expect 
that all applications filed by him will be preserved in secrecy. 



Rule 15 APPLICATIONS iisr secrecy. 22 

It is only under nnnsual circvimstances that information will 
be given to third parties. 

Eobinson v. Copeland, 102 0. G. 466. 

It is improper for the examiner to cite a decision of the 
office upon another pending application to which the applicant 
has not access. Even the statement that such a case is on 
file of doubtful propriety. 

Morley, 1902 C. D. 144, 99 0. G. 668. 

When an application is referred to in a subsequently granted 
patent, it is prima facie evidence that the patentee relies upon 
the pending application for certain purposes, and access to the 
same will ordinarily be granted to a party making a proper 
showing of interest. It must be accompanied .by a verified 
statement of facts, however. 

Dayton Fan Co., 1901 C. D. 157, 97 0. G. 552. 

Where a patentee has in the papers in his application re- 
ferred to a prior application filed by him and the petitioner 
asking copies of the prior 'application for use in a suit shows 
that the record therein is pertinent. Held, that he has a 
prima facie right to obtain copies. 

Eeed Mfg. Co., 1900 C. D. 141, 92 0. G. 2001. 

An applicant by referring to a caveat and quoting therefrom 
in an affidavit filed under Rule 75 to overcome a prior patent 
upon which the application stands rejected does not withdraw 
the caveat from the confidential archives of the patent office 
and lose the right to have it "preserved in secrecy" so that 
another applicant with Avhose application his application is 
placed in interference becomes entitled to a copy of the caveat. 
In re Lowry, 1900 C. D. 1, 90 0. G. 445.' 

Copies of papers furnished equitable owners in an interfer- 
ence proceeding. 

Reiner V. MacPhail, 1899 C. D. 196, 89 0. G. 521. 

It is in accordance with public policy and correct practice 
to refuse to give strangers to the record copies of pending ap- 
plications without the consent of the apjslicants or assignees. 
Stockton, 1897 C. D. 24. 

For obvious reasons the greatest possible degree of secrecy 
should be exercised to prevent the marauding of patentable 
devices, and Rules 18 and 19 were promulgated with this end 
in view. 

Knight V. Bagnall v. Curtis v. Morgan, 1896 C. D. 109, 
76 0. G. 1115. 

The office is not warranted in furnishing copies of the 
papers in pending applications, except to parties in interest, 
unless advised by a court of competent jurisdiction, having a 



23 EEGISTEE OF ATTOENEYS. Eule 17 

case before it, that evidence of this sort within the possession 
of the office is essential to the proper decision of the case. 

Ex parte American Bell Telephone Company, 1893 C. D. 
46, 63 0. G. 152. 
The statute does not limit the period of secrecy relative to 
a caveat to one year. 

Pollock, 1892 C. D. 103, 59 0. G. 939. 
Because an applicant has been forced to use an application 
in an interference proceeding to establish a record date, it does 
not follow that the office should allow any and everyone to 
obtain copies of said aisplication. 

Dyer, 1891 C. D. 12, 56 0. G. 1564. 
Whether wise or unwise, this rule is in force and must be 
considered in the adoption of any general rule for the dispo- 
sition of ex parte protests against the issue of Letters Patent. 
Neale, 1879 C. D. 11, 15 0. G. 511. 
Where an application is put into interference with a patent, 
the attorneys for the patentee are not entitled to receive the 
same information of the applicant's application that the records 
of the patent office give him of the patentee's. 
See Davis v. Garrett, 123 0. G. 1991. 

Rule 16. Records and Copies in Patented Cases. 

After a patent has issued, the model, specification, 
drawings, and all documents relating to the case are 
subject to general inspection, and copies, except of the 
model, will be furnished at the rates specified in Rule 
191. 

See notes to Rule 179. 

ATTORNEYS. 
Rule 17. Register of Attorneys, 

An applicant or an assignee of the entire interest 
may prosecute his own case, but he is advised, unless 
familiar with such matters, to employ a competent 
patent attorney, as the value of patents depends 
largely upon the skillful preparation of the specifica- 
tion and claims. The office can not aid in the selec- 
tion of an attorney. 

A register of attorneys will be kept in this office, on 



Rule 17 REGISTER OF ATTORNEYS. 24 

which will be entered the names of all persons en- 
titled to represent applicants before the Patent Office 
in the presentation and prosecution of applications 
for patent. The names of persons in the following 
classes will, upon their written request, be entered 
upon this register: 

(a) Any attorney at law who is in good standing in 
any court of record in the United States or any of the 
States or Territories thereof and who shall furnish a 
certificate of the clerk of such United States, State, or 
Territorial court, duly authenticated under the seal of 
the court, that he is an attorney in good standing. 

(b) Any person not an attorney at law who is a cit- 
izen or resident of the United States and who shall 
file proof to the satisfaction of the Commissioner that 
he is of good moral character and of good repute and 
possessed of the necessary legal and technical quali- 
fications to enable him to render applicants for pat- 
ents valuable service and is otherwise competent to 
advise and assist them in the presentation and prose- 
cution of their applications before the Patent Office. 

(c) Any foreign patent attorney not a resident of 
the United States, who shall file proof to the satisfac- 
tion of the Commissioner that he is registered and in 
good standing before the patent office of the country 
of which he is a citizen or subject, and is possessed 
of the qualifications stated in paragraph (b). 

(d) Any firm will be registered which shall show 
that the individual members composing the firm are 
each and all registered under the provisions of the 
preceding sections. 

(e) The Commissioner may require proof of quali- 
fications other than those specified in paragraph (a) 
and reserves the right to decline to recognize any at- 



25 EEGISTEE OF ATTORNEYS. Rule 17 

torney, agent, or other person applying for registra- 
tion under this rule, 

(/) Any person or firm not registered and not en- 
titled to be recognized under this rule as an attorney 
or agent to represent applicants generally may, upon 
a showing of circumstances which render it necessary 
or justifiable, be recognized by the Commissioner to 
prosecute as attorney or agent certain specified appli- 
cation or applications, but this limited recognition 
shall not extend further than the application or appli- 
cations named. 

(g) No person not registered or entitled to recog- 
nition as above provided will be permitted to prose- 
cute applications before the Patent Office. 

CONSTRUCTIONS. 

Eev. Stat.; sees. 475, 481, 484, 4883. 
For amendment to this rule, see 205 0. G. 308. 
An amendment constituting section (h) regulating advertis- 
ing matter used or to be used by attorneys added 252 0. G. 
747. 

See Journal of the Patent Office Society, vol. I, No. 2, 
pp. 66, 67. 
In the District of Columbia an attorney may not act as 
notary in his own case (Amendment to law). 215 0. G. 1267. 
Where an applicant dies pending his application the au- 
thority of his solicitor ceases. 

Phillips V. Sensenich, 134 0. G. 1806. ■ 
A person in the employ of the United States as a U. S. 
Commissioner can not act as attorney. 
Bloch, 128 0. G. 457. 
Inadvertence of attorney may be remedied by reissue. 
Heroult, 127 0. G. 3217; see note under 'Rule 86. 
Rule cited in Cazin, 12^0 0. G. 660. 
Negligence of the attorney is negligence of the principle. 

White V. Hewitt and Nolen, 115 0. G. 1847. 
The assignment must definitely identify the application. 

Williamson, 88 0. G. 2065, 1899 C. D. 177. 
The power of attorney given by the assignees (i/o interest) 
may be recognized as giving the attorneys the right to inspect 



Rule 17 EEGISTER OF ATTORNEYS. 26 

and obtain information as to the case but not the right to 
amend. 

Sandstrom, 1904 C. D. 486, 113 0. G. 850. 
Attorneys have power to make proper amendments to the 
drawing. 

Wilcox, 101 0. G. 1839. 
May not sign a drawing in addition to inventor. 

McDonald, 1903 C. D. 408, 101 0. G. 1839. 
Delay can not be considered unavoidable where it is due to 
the negligence of the attorney. 

Collins, 1901 C. D. 181, 97 0. G. 1373. 
Mistake of attorney in doubtful point of law not attributable 
to applicant. 

Newton v. Woodward, 1900 C. D. 406, 93 0. G. 3319. 
If an attorney has been appointed orally and recognized by 
the Office, after filing a formal power of attorney he may sign 
and appeal nunc jsro tunc. 

Pitney v. Smith & Egge, 1889 C. D. 193, 49 0. G. 139. 
The law seems to prescribe.no qualifications, either of ca- 
pacity, character, age, sex or citizenship, or of any other 
kind for patent agents. 

Hoosier Drill Co. v. Inglis, 1879 C. D. 80; Beck, 1880 
C. D. 54, 17 0. G. 339. 
Attorneys, original and substitute, have liens on papers. 

Bowers, 1879 C. D. 375, 16 0. G. 1004. 
An attorney has no such claim upon his client's papers as 
a mortgagee has upon mortgaged property whether personal 
or real. He has a right to retain possession of them until his 
fees are paid. The same rule ought to be applied to patent 
agents. The substitute attorney has a right to retain posses- 
sion of the Letters Patent until the fees of the principal at- 
torney are paid. Having given the patentee notice before he 
has paid the fees, the substitute attorney has a right to demand 
that his portion of the fees should be paid directly to him. 
Bowers, 1879 C. D. 375, 16 0. G. 1004. 
May not eliminate an essential feature of the invention. 

Murdock, C. D., 16 0. G. 95. 
The office of a patent solicitor is merely temporary; it is 
unlike that of an attorney before a court of law; it begins and 
ceases with each particular case. 

Hoosier Drill Co. v. Ingells, 15 0. G. 1013. 
May sometimes sign petition. 

Higginbotham, 1875 C. D. 93, 8 0. G. 337; see notes, 
Eules 5, 6, 7, and 8. 



27 ■ POWER OF ATTORNEY. Rule 18 

Rule 18. Power of Attorney. 

Before any attorney, original or associate, will be 
allowed to inspect papers or take action of any kind, 
Ms power of attorney must be filed. But general 
powers given by a principal to an associate can not 
be considered. In each application the written au- 
thorization must be filed. A power of attorney pur- 
porting to have been given to a firm or copartnership 
"will not be recognized, either in favor of the firm or 
of any of its members, unless all its members be 
named in such power of attorney. 

CONSTRUCTIONS. 

One of two joint applicants can not appoint an attorney 
without the concurrence of the co-applicant except upon a 
showing of inability to obtain such concurrence. 

Benjamin and Bailey, 59 0. G. 398; Barrett and Aller, 
127 0. G. 847; Forrest and Horton, 141 0. G. 566. 
That rule of the Office which denies recognition to general 
powers of attorney seems to be applicable here. The power 
should be signed by the executor himself. 
Pogers, 125 0. G. 2766. 
Under the usual and long established practice written power 
was not necessary to entitle counsel to take part in the ex- 
amination of the witnesses. 

Fairbanks v. Sauer v. Karr, 1904 C. D. 503, 113 0. G. 
1148. 
Associate attorneys are appointed by the principal attorneys 
and not bv the assignees of the inventor. 

Hertford, 1904 C. D. 487, ll3 0. G. 851. 
An attorney may sign a petition for the renewal of a caveat. 

Eeim, 103 0. G. 2173. 
Where one of two joint applicants subsequently files a sole 
application for the same improvement, a power of attorney, 
executed by the other of the joint applicants and their assign- 
ees, will be accepted by the Office as sufficient. 

Benjamin and Bailey, 1892 C. D. 85, 59 0. G. 2983. 
Papers signed nunc pro tunc. 

■ Pitney v. Smith v. Egge, 1889 C. D. 193, 49 0. G. 129. 

When two or more attorneys are appointed the applicant 

should designate with which correspondence should be held. 



Rule 19 SUBSTITUTION AND ASSOCIATION. 28 

If he does not and one is a Washington attorney, correspond- 
ence will be held with him. 

Jewett, 1887 C. D. 17, 38 0. G. 781. 
It is not within the power of an attorney to abandon the 
application by canceling all the claims. 

Lasscell, 1884 C. D. 43, 28 0. G. 1274. 

Rule 19. Substitution and Association. 

Substitution or association can be made by an attor- 
ney upon the written authorization of his principal; 
but such authorization will not empower the second 
agent to appoint a third. 

CONSTRUCTIONS. 

N"o appeal from the Commissioner refusing to ignore an 
assignment. 

In re Wurtg, Jr., 123 0. G. 320. 
The greatest possible degree of secrecy should be exercised 
to prevent the marauding of patentable devices, and Eules 18 
and 19 were promulgated with this end in view. 

Knight V. Bagncell v. Curtis v. Morgan, 1896 C. D. 109, 
76 0. G. 1115. 
An associate attorney cannot be appointed by the principal 
without the consent of the attorney. 
Eule 19 seems specific on this subject. 

Ranks, 38 0. G. 329 ; Beck, 1880 C. D. 54, 17 0. G. 329. 

An associate power of attorney given by the applicant will 

not be recognized without the assent of the principal attorney. 

Ranks, 1887 C. D. 7, 38 0. G. 329. 

"Whether principal or associate, it makes no difference." 

(Endorsement by Com. Ewing on a Petition.) 

So far as published decisions go. Ex parte Ranks still 
stands. 

Journal of the Patent Office Society, Vol. 1, .No. 1, 
.page 37. 
The acts of an associate attorney are binding upon the 
principal. 

Clausen, 1899 C. D. 183, 88 0. G. 2242-43. 

Rule 20. Revocation. 

Powers of attorney may be revoked at any stage in 
the proceedings of a case upon application to and ap- 



29 EEvocATioN OF POWER. Rule 20 

proval by the Commissioner ; and when so revoked the 
office will communicate directly with the applicant, or 
another attorney appointed by him. An attorney will 
be promptly notified by the docket clerk of the revo- 
cation of his power of attorney. An assignment will 
not operate as a revocation of the power previously 
given, but the assignee of the entire interest may be 
represented by an attorney of his own selection. 

CONSTRUCTIONS. 

There is no provision of law giving the Commissioner a 
right to refuse the revocation of a power of attornev. 
Eosell 197 0. G. 535. 
Death of principal does not revoke a power of attorney in 
all respects. 

(147 U. S. 309, 2291); Meta Mathillath, 179 0. G. 853. 
Must be a legal title, an equitable title is not sufficient. 
There must be a request to issue the patent to the assignee. 
Stanford, 138 0. G. 527. 
A collateral attack on validity of rule not considered. 

Adams, 129 0. G. 1612. 
This rule is only applicable to cases in charge of the ex- 
aminer. There is no express provision for changing attorneys 
while cases are in the issue division. All powers of attorney, 
or revocations thereof received while the case is in the issue 
division, will be submitted to the Commissioner for his action. 
Morley, 37 0. G. 337; Pitney, 1880 C. D. 76, 17 0. G. 
447. 
On the death of the inventor an assignee of the entire inter- 
est may appoint an attorney. 
Wick, 117 0. G. 902. 
A power of attorney accompanied by an assignment of an 
interest to the attorney is irrevocable. A power coupled with 
an interest. 

Edwards & Gregory, 1904 C. D., 110 0. G. 860. 
Death of inventor revokes power of attorney. 

Ex parte Jones, 1903 C. D., 103 0. G. 228. 
An equitable assignee of the entire interest refused recog- 
nition. 

MacPhail, 1899 C. D. 196, 89 0. G. 521. 
A power of attorney coupled with a promise to pay to the 
attorney ten per cent of all money received for the invention 



Rule 21 ATTOENEYS' EOOM. 30 

does not give him such an interest in the invention as to 
render the said power of attorney irrevocable. 
Firsching, 1897 C. D. 49, 80 0. G. 1273. 
The assignee of an entire interest may control the appoint- 
ment and dismissal of an attorney to the exclusion of the 
applicant; but when an applicant joins with an assignee of 
less than the whole interest, or with the grantee or a licensee, 
in making a power it will require the cooperation of both to 
revoke. 

Anderson, 1893 C. D. 12, 62 0. G. 449. 
Practice where a revocation of power of attorney is received, 
a time and place of hearing will be fixed by the docket clerk 
and entered upon the docket, and notice thereof given to the 
parties interested, including in all cases applicant and the 
assignee, if there be one, and the attorneys sought to be de- 
posed, and in case of substitution also the attorney sought to 
be substituted. 

Morley, 1886 C. D. 32, 37 0. G. 337. 
A power of attorney which is part of the security for the 
performance of a contract, as to assign an interest, is not 
revocable. 

Morlev, 1886 C. D. 32, 37 0. G. 337; Harrison, 1878 C. 
D. 58, 13 0. G. 547. 
Death of an inventor revokes power of attorney. 

Eagleton Mfg. Co. v. West, Bradlev & Gary Mfg. Co., 
1880 C. D. 532, 17 0. G. 1504; (Supreme Court, 1884 
C. D. 261, 27 0. G. 1237). 
Under rule 121 (1878), patent agents are discharged, not 
on motion allowed by the Patent Office, but on notice com- 
municated to the Patent Office. 

Hoosier Drill Co. v. Ingels, 1879 C. D. 86, 15 0. G. 1013. 
Cases passing on the subject matter. 

Hill and Hill, 206 0. G. 1437, see notes to Eule 5 ; Lot- 
terhand v. Cornwall, 148 0. G. 1344; Hinkson, Hey, 
and McConahy, 1904 C. D., Ill 0. G. 2220; Collins, 
1902 C. D. 324, 100 0. G. 2601. 

Rule 21. Attorneys' Room. 

Parties or their attorneys will be permitted to ex- 
amine their cases in the attorneys' room, but not in 
the rooms of the examiners. Personal interviews 
with examiners will be permitted only as hereinbefore 
provided. (See Eule 13.) 



31 DECORUM. Rule 22 

Rule 22. Decorum and Courtesy in Business. 

(a) Applicants and attorneys will be required to 
conduct their business with the office with decorum 
and courtesy. Papers presented in violation of this 
requirement will be submitted to the Commissioner, 
and returned by his direct order. 

(5) Complaints against examiners and other officers 
must be made in communications separate from other 
papers, and will be promptly investigated. 

(c) For gross misconduct the Commissioner may re- 
fuse to recognize any person as a patent agent, either 
generally or in any particular case; but the reasons 
for the refusal will be duly recorded and be subject 
to the approval of the Secretary of the Interior. 

(d) The Secretary of the Interior may, after notice 
and opportunity for a hearing, suspend or exclude 
from further practice before the Patent Office any 
person, firm, corporation, or association shown to be 
incompetent, disreputable, or refusing to comply with 
the rules and regulations thereof, or with intent to 
defraud, in any manner deceiving, misleading, or. 
threatening any claimant or prospective claimant, by 
word, circular, letter, or by advertisement, or guaran- 
teeing the successful prosecution of any application 
for patent or the procurement of any patent, or by 
word, circular, letter, or advertisement making any 
false promise or misleading representation (Sec. 5, act 
approved July 4, 1884), or who use the name of any 
members of either House of Congress or of any officer 
of the Government in advertising his business. (Act 
approved April 27, 1916.) 

CONSTRUCTIONS. 

Rev. Stat., sec. 487. 

Amendment pending, H. B. 11984, empowering the Com- 
missioner to prescribe rules and regulations governing the 
recognition of attorneys. 

Add to subdivision (d) "Or who use the name of any mem- 



Rule -23 SENATORS OE REPEESENTATIVES. 32 

ber of either House of Congress or of any officer of the Gov- 
ernment in advertising business. Act approved April 27, 
1916." 

205 0. G. 308. 
A complaint and petition under E. 145 at the same time 
improper. 

Eggan, 172 0. G. 1091. 
Complaint ordered expunged from petition and brief. 

Duryed & White v.^Eice, 1904 C. D., 114 0. G. 761. 
It is a general principle of law that the statements of coun- 
sel with regard to a case are privileged and that he is per- 
mitted to use language in his argument and make statements 
in his brief which if used out of court might be considered 
objectionable. 

Schellenbach v. Harris, 1903 C. D., Ill 0. G. 2223. 
An elaborate discussion of misconduct of attornevs. 

John Wedderburn & John Wedderburn & Co., 1897 C. D. 
77, 81 0. G. 159. 
Irrelevant personal reflections on an attorney struck out of 
the Office letter and the reply of the attorney thereto returned 
under Eule 22. 

Oliver, 1896 C. D. 29, 76 0. G. 961. 
. See Anderson, 1889 C. D. 167, 47 0. G. 1633. 
Communications will not be returned except after being 
submitted to the Commissioner and by his direct order. 
Kouns, 1887 C. D. 139, 41 0. G. 1271. 
The judgment of the Commissioner of Patents disbarring a 
solicitor for surreptitiously placing a copy of a caveat in the 
official files extends only to the exclusion of the solicitor, and 
not to the effect of the paper as evidence in pais, although its 
effect upon the instrument as a caveat of record might be 
greater. 

Campbell v. James, 1880 C. D. 633, 18 0. G. 979 ; Eobert- 

son V. Lecombe Mfg. Co., 3 0. G. 412. 
If attorneys and others think they have reason for the use 
of abusive language toward the Examiner, they should ffle 
direct charges, so that the Examiner may have opportunity to 
be heard. To interpolate such charges in an argument before 
the Commissioner is unprofessional. 
Chambers, 1873 C. D. 56. 

Rule 23. Services of Senators or Representatives. 

Inasmuch as applications can not be examined out 
of their regular order, except in accordance with the 
provisions of Rule 63, and Members of Congress can 



33 ENTITLED TO A PATENT. RuIg 24 

neither examine nor act in patent cases without writ- 
ten powers of attorney, applicants are advised not to 
impose upon Senators or Representatives labor which 
will consume their time without any advantageous 
results. 

APPLICANTS. 

Rule 24. Who is Entitled to a Patent. 

A patent may be obtained by any person who has 
invented or discovered any new and useful art, ma- 
chine, manufacture, or composition of matter, or any 
new and useful improvement thereof, not known or 
used by others in this country before his invention or 
discovery thereof, and not patented or described in 
any printed publication in this or any foreign coun- 
try before his invention or discovery thereof, or more 
than two years prior to his application, and not pat- 
ented in a country foreign to the United States on an 
application filed by him or his legal representatives 
or assigns more than twelve months before his appli- 
cation, and not in public use or on sale in the United 
States for more than two years prior to his applica- 
tion, unless the same is proved to have been aban- 
doned, upon payment of the fees required by law and 
other due proceedings had. (For designs, see Rule 79.) 

CONSTRUCTIONS. 

The subject of invention has been so fully treated in the 
text books and digests that no attempt to completely collect 
the decisions has been made here. 
Eev. Stat., sees. 4886, 4887. 
A collapsible tube differing from another in that its end is 
rounded and it has a bead is lacking in patentable invention. 
Lambert, 119 0. G. 1935. 
In the present case merely allowing the corners of the 
buckle frame to remain angular instead of rounding them, as 
in the references, involves nothing of inventive genius. 
Knothe, 102 0. G. 1294. 



Rule 24 ENTITLED TO A PATENT. 34 

Process, lacking in novelty. 

Colton, 1903 C. D. 436. 101 0. G. 2285. 
. Coaling ships, held to cover function of a machine and not 
a true process. 

Trepler v. Lende, 1893 C. D. 444, 101 0. G. 2388. 
Where the art of advertising as claimed produces no physi- 
cal effect it is not patentable. 

Turner, 1894 C. D. 36, 6Q 0. G. 1593. 
Bar of public use not avoided by caveat. 
Meucci, 1890 C. D. 65, 51 0. G. 399. 
The discovery that a natural production possesses certain 
qualities which tit it for a certain use entitles the discoverer 
to a patent for such use. 
Floyd, 1874 C. D. 104. 
To be patentable it is not necessary that the device should 
be any improvement over what has been done before. 
Stone, 1873 C. D. 105. 
An article of manufacture must be complete and ready for 
use and sale in the market. 

Campbell, 1873 C. D. 338. 
An article of manufacture is a device complete in itself for 
some special use, and not to be applied to general purposes 
likes pipes or tubes. 

Sellers, 1873 C. D. 197. 
The process by which an article is made is a matter alto- 
gether distinct from the article itself so far as the patent- 
abilitv of the article is concerned. 

Sellers, 1873 C. D. 197; Ackerson, 1869 C. D. 74; Trues- 
dell, 1870 C. D. 130; Designolle, 1878 C. D. 10. 
While wood and zinc had previously been used to protect 
carpets, etc., from the radiant heat of the stove, still that 
combination, with the addition of tar, to keep the wood from, 
warping whereby a thin piece of wood could be used, making 
a convenient article for sale, is patentable as a new article of 
manufacture. 

Cottrell, 1873 C. D. 93. 
Invention must be exhibited in articles of manufacture as 
well as in machines. 

Wattles, 1873 C. D. 50. 
The tests of the patentability of articles of manufacture are : 
1st, Is the device of itself an article of trade? 2d, Is it use- 
ful? 3d, Is it so different in essential points, from other 
articles of the class to which it belongs, as to be easily dis- 
tinguished in the market? These being answered in the 



35 EXECUTORS AND ADMINISTEATOES. Rule 25 

affirmative, a patent should be allowed. "The beauty of an 
ornament is one great test of its utility." 

Moore, 1871 C. D. 249, 1872 C. D.^ 154, 1871 C. D. 256. 
The law never was intended to give a man a design patent 
to serve merely the purpose of a trade-mark. Questioned if 
colors or the blending of them is patentable as a design. 
Weinberg, 1871 C. D. 244. 
A billiard table having a bed made by cement is patentable 
as a new article of manufacture. 

Bond, 1869 C. D. 17; Harris, 38 0. G. 104. 
Utility in the eye of the patent law, refers rather to a 
utility of purpose than a utility of means. If the means are 
inferior to the old way of doing the same thing, or inferior 
to other new ways the invention sinks into obscurity, and is 
soon forgotten. 

Cheesbrough, 1869 C. D. 18; Moody v. Hudson, 1869 C. 
D. 108; Brown, 1870 C. D. 45. 

Rule 25. Executors and Administrators. 

In case of the death of the inventor, the application 
will be made by and the patent will issue to his ex- 
ecutor or administrator. In that case the oath re- 
quired by Rule 46 will be made by the executor or 
administrator. In case of the death of the inventor 
during the time intervening between the filing of his 
application and the granting of a patent thereon, the 
letters patent will issue to the executor or adminis- 
trator upon proper intervention by him. The executor 
or administrator duly authorized under the law of any 
foreign country to administer upon the estate of the 
deceased inventor shall, in case the said inventor was 
not domipiled in the United States at the time of his 
death, have the right to apply for and obtain the 
patent. The authority of such foreign executor or 
administrator shall be proved by certificate of a dip- 
lomatic or consular officer of the United States. 

In case an inventor become insane, the application 
may be made by and the patent issued to his legally 



Rule 25 EXECUTORS and ADMIjSriSTEATOES. 36 

appointed guardian, conservator, or representative, 
who will make the oath required by Rule 46. 

CONSTRUCTIONS. 

Rev. Stat., sec. 4896, Act of Feb. 28, 1899. 

There should be filed either a certificate of a German Court 
of Eecord that Mrs. N. is entitled to administer the estate, 
such certificate being properly proved by the certificate of a 
consular, or diplomatic, officer, or else a formal .statement to 
that effect from the German embassy or the German consulate 
at Baltimore. 

Kiedenfiihr, 130 0. G. 981. 

See order No. 1,792, 138 0. G. 970. This order modified 
by order No. 1827, Oct. 22, 1909, 148 0. G. 837. 

Proof of authority shall in all cases be recorded in the as- 
signment records. A reference to this record to be placed in 
each application involved. 

In Germany a certificate of inheritance may take the place 
of letters testamentary, etc., but must be properly proved. 
- Niedenfiihr, 130 0. G. 981. 

The proper way to prove the power of executors and admin- 
istrators to intervene in the prosecution of applications for 
patents is by a certified copy of the letters testamentary or 
letters of administration signed by an officer of the court, 
authenticated by the seal of the court. 
Eogers, 125 0. G. 2766. 

A certificate of the Probate Court is not sufficient evidence 
on which to permit an alleged administrator or executor to 
prosecute an application of a deceased person. When an ad- 
ministrator desires to intervene it is necessary to file in each 
case certified copies of the letters of administrations, so that 
the Office can determine for itself the powers and duties con- 
ferred upon such administrator. The request that the execu- 
tor or administrator may intervene should also be signed by 
the administrator or executor and not by attorney. This 
applies to foreign executors, etc. 

Pilgrim Paper Company, 125 0. G. 993. 

The deeds and contracts made by insane persons before 
they are adjudged insane, but within the period overreached 
by the finding of the jury, are not necessarily void. 
Wurtz, 123 0. G. 320. 

Where the inventor dies after filing an application it is not 
necessary for the administrator to file a new application. He 



37 PATENTS TO ASSIGNEES. Rule 26 

takes up the work where the inventor left off. Said in a case 
where papers were prepared but not filed at inventor's decease. 
Jones, 103 0. G. 228. 
Executor or administrator should make the application even 
when the inventor executes papers before he dies. 
Lewis, 93 0. G. 1311. 
That a gaiardian has been appointed by a foreign court is 
not sufficient. 

Hummel, 1900 C. D. 15, 94 0. G. 583. 
Practice in case of interference. It cannot be properly 
held that an application has no standing before the Office 
because the inventor is dead and the executor has not asserted 
his rights. 

Handly v. Bradley, 89 0. G. 522. 
If the inventor dies during the pending of the application 
it is not necessary to withdraw the application and file a 
second; but there is no objection to such a course provided 
the rights of third parties are not infringed. 

Eice V. Burt, 1879 C. D. 2991, 16 0. G. 1050. 
Proof that the applicant is the administrator of the deceased 
inventor must be made. Foreign letters of administration are 
not sufficient. Ancillary letters of administration must be 
taken out in the United States. 

Executors of Eobert Eansome, 1870 C. D. 143. 
Cases passing on the subject matter of this rule. 

Deeter, 1900 C. D. 162, 93 0. G. 190; Decker v. Loosley, 
1896 C. D. 106, 77 0. G. 2140; Chose v. Eyder, 1892 
C. D. 219, 61 0. G. 885. 

Rule 26. Patents to Assignees. 

In case of an assignment of the whole interest in 
the invention, or of the whole interest in the patent 
to be granted, the patent will, npon request of the ap- 
plicant embodied in the assignment, issue to the as- 
signee; and if the assignee hold an undivided part 
interest, the patent will, upon like request, issue 
jointly to the inventor and the assignee; but the as- 
signment in either case must first have been entered 
of record, and at a day not later than the date of the 
payment of the final fee (see Rule 188) ; and if it be 
dated subsequently to the execution of the application, 



Rule 26 PATENTS TO ASSIGNEES, 38 

it must give the date of execution of the application, 
or the date of filing, or the serial number, so that 
there can be no mistake as to the particular invention 
intended. The application and oath must be signed 
by the actual inventor, if alive, even if the patent is 
to issue to an assignee (see Rules 30, 40) ; if the in- 
ventor be dead, the application may be made by the 
executor or administrator. 

CONSTRUCTIONS. 

See Rules 5, 6 and 183. 

Rev. Stat., sec. 4895. 
See order No. 1,792, 138 0. G. 970. 

Whether the request to issue the patent to the assignee, to- 
gether with a record of the assignment is necessary to vest 
the legal title in the assignee has heen variously decided. 

Harrison v. Morton, 83 Md. 477; Walker on Patents, 

235-336; Robinson on Patents, p. 580 atRrmative; 

Wende v. Harine, 191 Fed. 620, negative; Hildreth v. 

Averbach, 200 Fed. 972. 

The assignee of a part interest is joined in the issue of a 

patent only upon request of the applicant imbodied in the 

assignment. 

Ryle, 193 0. G. 753. 
A difPerent rule has been advanced but it is thought that 
one rule should prevail. 

Dudley, 187 0. G. 831. 
A patent will not be issued to the assignee upon an assign- 
ment subject to an exclusive license. 
Hubert, 171 0. G. 745. 
A license of record will not prevent the issuance of a patent 
on a proper assignment (authorities). 
Hubert, 171 0. G. 745. 
It is purely discretionary with the commissioner whether he 
shall issue the patent to the assignee. 

In re Pearsall, 31 App. D. C. 205; Moore, Com. v. U. S. 
ex rel. Boyer, 138 0. G. 530. 
An assignment of the legal title including a request to issue 
the patent to the assignee necessary. 
Stanford, 138 0. G. 527. 
P filed an application Sept. 15, '02 and assigned his interest 
to V Sept. 18, '04. B made a second application and assigned 
his interest to W. The Patent Office issue a patent on' the 



39 PATENTS TO ASSIGNEES. Eule 26 

second application and rejected the first application on said 
■patent. 

AiBrmed by Court of Appeals. 
In re Pearsall, 135 0. G. 221. 
Assignments from an executor, without copies of the letters 
testamentary, may be recorded, but the patent may not issue 
to the assignee. 

Pilgrim Paper Company, 125 0. G. 994. 
Where each of two applications filed by the same inventor 
contain some claims for the same subject matter and both 
applications and the inventions disclosed therein are assigned, 
respectively to different assignees the application which was 
first assigned should be passed to issue and the claims in the 
other application should be only such as can not be properl}' 
made in the first. 

McCormick, 116 0. G. 1183. 
The reservation of a license does not prevent the transfer of 
the legal title to the invention and patent to be granted. 
Eowand, 114 0. G. 2091. 
The instrument, however, lacks the request that the patent 
be issued to the assignee (Eule 26) and it therefore does not 
convey the legal title, which still remains in the applicant. 
Hertford, 113 0. G. 851. 
Where there were two assignments, one containing a request 
to issue the patent to the assignee. Held that with such 
request the legal title was perfect that an assignment without 
such request conveyed only an equitable interests. That the 
legal title should be observed by the Office. 
Graham, '1]2 0. G. 1752. 
In case of conflicting assignments the patent will issue to 
the inventor. 

Moller, 1904 C. D., 108 0. G. 2144. 
The office uniformly refuses to render Judicial decisions in 
matters relating to the recording of papers of the nature of 
assignments. It requires that applications intended to be cov- 
ered by assignments be identified therein otherwise than by 
subject matter and the same rule applies where it is intended 
to except certain matter from the assignment. 
Long, 1903 C. D., 104 0. G. 851. 
The power conferred upon the Commissioner to issue the 
patent to the assignee is discretionary. If there is doubt if 
an undivided interest is assigned, the patent should issue to 
applicant. 

Eickemeyer, 1902 C. D. 174, 99 0. G. 1622. 
Questions under this rule to be determined by record exclu- 



Rule 26 PATENTS TO ASSIGNEES. 40 

sivelv. An assignment should contain a request to issue patent 
to assifijnee. 

Tracy, 1900 C. D. 12, 94 0. G. 431. 
If there are two conflicting assignments only one of which 
contains a request to grant the patent to the assignee, the one 
in which the request is, shall prevail. 

If there are two proper conflicting assignments correspond- 
ence shall be with the inventor. 
McTammany, 93 0. G. 751. 
It must be a technical assignment a license is not sufficient. 

Eosback, 1899 C. D. 202, 89 0. G. 705. 
A request that a power of attorney given by an alleged 
assignee be approved and that the patent issue to said assignee 
denied, as the assignment fails to fully identify the application 
and to specifically request the issue of the patent to the as- 
signee. 

Chillingsworth, 1897 C. D. 72, 80 0. G. 1892. 
The Office must follow the record, since it has no means of 
determining disputed questions of fact. 
•Fichols, 1897 G. D. 70, 80 0. G. 1891. 
The Office is not the place to try doubtful questions of 
title. 

It is not even mandatory for the Commissioner to issue a 
patent to the assignee. 

McParlane, 1896 C. D. 37, 76 0. G. 1418. 
Where an assignment from one of several joint inventors 
contains a request that the patent shall issue to his assignee. 
Held that the request will be observed and the patent be issued 
jointlv to the remaining inventors and the assignee. 
Fowler, 1894 C. D. 109, 69 0. G. 1641. 
Where one of two joint inventors assigned his interest to a 
third person and requested that the patent issue jointly to such 
third person and the other inventor in the absence of any 
objection there was no error in issuing the patent as directed. 
Fowler & Hutton, 1893 C. D. Ill, 64 0. G. 1131. 
The statute is not mandatory, and in case of contest be- 
tween the parties, the Commissioner may in his discretion 
issue the patent to the inventor. 

Spielman, 1892 C. D. 1, 58 0. G. 141. 
Patent may not be granted to a party having only a terri- 
torial interest. 

Buchanan, 1891 C. D. 104, 56 0. G. 140. 
The issue of the patent will not be stayed to have the courts 
determine the equitable title when the legal title is shown by 
the record. 

Shedlock et al. v. Hannay et al., 1890 C. D. 4, 50 0. 



41 JOINT INVENTORS, RuIg 28 

G. 166; Agee, 1903 C. D. 399, 101 0. G. 1609. 

Rule 27. Inventor Believing- Himself to be First In- 
ventor. 

If it appear that the inventor, at the time of mak- 
ing his application, believed himself to be the first in- 
ventor or discoverer, a patent will not be refused on 
account of the invention or discovery, or any part 
thereof, having been known or used in any foreign 
country before his invention or discovery thereof, if it 
had not been before patented or described in any 
printed publication. 

Eev. Stat., sec. 4923. 

Eeduction to practice in a foreign country can never operate 
to destroy a patent applied for here, however widely known 
such reduction to practice may be, either among foreigners or 
among persons living here, unless the invention be patented 
or described in a printed publication. 

Westinghouse Machine Co. v. General Electric Co., 196 0. 
G. 276. 

Rule 28. Joint Inventors. 

Joint inventors are entitled to a joint patent; 
neither of them can obtain a patent for an invention 
jointly invented by them. Independent inventors of 
distinct and independent improvements in the same 
machine can not obtain a joint patent for their sep- 
arate inventions. The fact that one person furnishes 
the capital and another makes the invention does not 
entitle them to make an application as joint inventors; 
but in such case they may become joint patentees, 
upon the conditions prescribed in Rule 26. 

CONSTRUCTIONS. 

"Former rule 32 of the Patent Office, which was promul- 
gated in 1897 and provided that new parties might be 
added to a pending application of joint inventors, that some 
of the parties might be dropped where all consented in 



Rule 28 JOINT INVENTOES. 42 

writing and when the nonjoinder or misjoinder was by mis- 
take and without fraudulent intent." C. A of D. C, In re 
Roberts, 273 0. G. 410. This was one of the rules of Com. 
Seymour's anomalous edition, which lasted only a few 
months. 

A joint application by three parties is by a different appli- 
cant from one by two of the three. 

Hertzberg & Wohl, 184 0. G. 805; Kauermann, 157 0. 
G. 207. 
A joint application may not be changed to a sole applica- 
tion. 

Weil and Grant, 173 0. G. 1081, 2. 
Where one coapplicant does not join in the written abandon- 
ment of an application, it can be given no effect. 
Barrett and Aller, 127 0. G. 847. 
Where one of two joint inventors seeks to cause abandon- 
ment of their application by preventing amendment thereof 
claiming that he is a sole inventor, and also files a written 
abandonment of the application. Held that permission will 
be given to the coinventor to prosecute the application through 
an attorney of his own selection. 

Barrett and Alter, 127 0. G. 847. 
Questions of joint or sole inventor arising in an interfer- 
ence must be determined by a separate proceeding. 
Hull V. Hallberg, lio' 0. G. 1428. 
While it is customary for both the joint inventors to sign 
the same paper, yet duplicates may be executed by the joint 
inventors. 

S. T. and C. H. Wellman, 88 0. G. 2065. 
Illustration of what are joint inventors. 

De Wallace v. Scott, 1899 C. D. 416, 88 0. G. 1704. 
When through ignorance a party who is not an inventor 
joins with the inventor in making application, the inventor 
can not legally succeed as sole applicant the joint applicants. 
The fact that for a time the rules permitted the substitution 
now asked for does not make it possible or equitable to grant 
relief not in accordance with law. 

Erne & Bridges, 1897 C. D. 197, 81 0. G. 2247. 
One of two joint inventors may not make an application for 
himself and the other joint inventor. 

Schaeffer, 1896 C. D. 30, 76 0. G. 1118; Benjamin and 
Bailey, 1892 C. D. 85, 59 0. G. 298. 
Where a caveat has been filed and abandoned by joint in- 
ventors, a sole applicant need not furnish proof that he is not 
one of joint inventors. 

Drury, 1891 C. D. 144, 56 0. G. 1447. 



43 FOEEiGisr PATENTS. Rule 29 

Where a patent is granted to joint inventors and an appli- 
cation is made for a sole patent for the same subject matter 
the burden of proof is on the applicant;, and he must over- 
come not only his adversary's testimony, but his own former 
oath of joint invention. 

The denial of the applicant's sole invention by the other 
party is not conclusive, however. 

"Lovrien v. Banister, 1880 C. D. 153. 
Doubted if the cases of De Lill v. Avery, and De Lill, 1870 
D. D. 138, and Chase & White v. Chase, 1873 C. D. 99 are 
authority to the contrary of the last clause, and if they are 
they should not be followed. 

Lovrien \. Banister, 1880 C. D. 153. 
There are different rules in England as to joint and sole 
invention. 

Siemens, 1877 C. D. 41, 11 0. G. 1107. 
AVhere a patent has issued to two persons as joint inventors, 
and an application was subsequently made by one of them as 
the sole inventor of the same subject matter, the doctrine of 
estoppel does not apply, but the proper course is for the Office 
to declare an interference between the parties to determine 
the question of priority of invention, as in other cases. Vol. 
4, p. 369. 

Quoted in Lovrien v. Banister, 1880 C. D. 152, 18 0. 

Cr. 399. 

A patent issued to joint applicants for an invention actually 

made by but one of them is absolutely void, and the mistake 

can not be rendered valid bv any act of the parties or the 

Patent Office. 

Barsaloux James & Lyon, 1878 C. D. 154 S. 16 0. G. 333. 
The matter of joint or sole inventors should as a rule be 
left where the parties themselves choose by their declaration 
to place it, and when the presumption of joint invention has 
once been created by the filing of a joint application upon a 
joint oath it can be overthrown only by evidence of the most 
unquestionable character. 

Wheeler v. Paissell & Miller, 1873 G. D. 33; Carter & 
Dwyer v. Perry & Dickey, 1875 C. D. 111. 

Rule 29. Foreign Patents. 

No person otherwise entitled thereto shall be de- 
barred from receiving a patent for his invention or 
discovery by reason of its having been first patented 
or caused to be patented by the inventor or his legal 



Rule 29 FOREIGN PATElsTTS. 44 

representatives or assigns in a foreign country, unless 
the application for said foreign patent was filed more 
than twelve months prior to the filing of the applica- 
tion in this country, in which case no patent shall be 
granted in this country. 

An application for patent filed in this country by 
any person who has previously regularly filed an ap- 
plication for a patent for the same invention or dis- 
covery in a foreign country which, by treaty, conven- 
tion, or law, affords similar privileges to citizens of 
the United States shall have the same force and effect 
as the same application would have if filed in this 
country on the date on which the application for 
patent for the same invention or discovery was first 
filed in such foreign country, provided the application 
in this country is filed within twelve months from the 
earliest date on which any such foreign application 
was filed; but no patent shall be granted upon such 
application if the invention or discovery has been 
patented or described in a printed publication in this 
or any foreign country, or has been in public use or 
on sale in this country, for more than two years prior 
to the date of filing in this country. 

Eev. Stat., sec. 4887. 

CONSTRUCTIONS. 

(Ante 1897.) A process patented in a foreign country does 
not limit an apparatus patent in U. S. 

Fireball Gas Tank & 111. Co. v. Commercial Acety. Co., 
221 0. G. 1039. 
Date of filing complete specification, when provisional can- 
celed. G. B. 

Hayes, 209 0. G. 1317. 
Under the old law a patent expired with a previous granted 
British Patent notwithstanding the provision of Art. 4 bis. of 
the international convention that a patent shall be indepen- 
dent of every patent in other countries. 

Sup. Ct! Cameron, etc., v. Knoxville, 187 0. G. 232. 



45 FOREIGN PATENTS. Rule 29 

A certified copy of original application necessary under the 
convention. 

Barthels, 179 0. G. 574. 
Under section 4887 of the E. S. two years must elapse 
before the invention disclosed by appellee in the British pat- 
ents become forfeited and the property of the public. 
Young V. Struble, 157 0. G. 488. 
Statute is not retroactive. 

Winter et al. v. Latorer, 157 0. G. 209. 
The Commissioner has no power to extend the time. The 
P. 0. authorities are not agents of the Patent OflBce. 
Kauermann, 157 0. G. 207. 
Substantial but not formal identity of claims necessary to 
identity of foreign patent with American (4887 E. S.). 

United Shoe Machy. Co. v. Duplessis Shoe Machinery 
Co., 148 F. E. 31. 
First day excluded in computing the 12 months. 

Hero-Bright Mfg. Co. v. Standard EoUer Bearing Co., 
147 0. G. 521. 
If the fee is not paid the application is not complete. 

McElray, 140 0. G. 1207. 
It is a "patent" granted for an invention which has been 
previously "patented" in a foreign country, etc., which is lim- 
ited (E. S. 4887). All through it is one patent against an- 
other. In the United States nothing is patented except what 
is covered specifically by the claims required by statute. The 
same was the law in England at the time the patent relied 
upon by the petitioner was then issued. (Edmuns on Patents, 
2d Ed., 181 et seq.) 

Westinghouse Elec. & Mfar. Co. v. Stanley Instrument Co., 
138 F. E. 826. 
It is incumbent upon a party if he would rely upon his 
alleged foreign application to establish by competent evidence 
that he is the party who filed the foreign application and he- 
also must show that the invention set forth in the foreign, 
application is the same as that covered by his application in 
this countrv. (Eousseau v. Brown, 104 0. G. 1120; Sander 
v. Crowell,'l6 0. G. 405; Pauling, 115 0. G. 1848.) 
De Ferranti v. Lindenark, 137 0. G. 731. 
The Commissioner has no authority to extend the time for 
filing. 

Meier, 136 0. G. 657. 
The Commissioner has no authority to extend the time. 

Eavelli, 130 0. G. 982; Meier, 136 0. G. 657. 
Though the American claim may be broader than that of 
the Prior British Patent it is still true that what is claimed 



Rule 29 FOREiGiSr patents. 46 

under the generic claim has already been patented in a for- 
eign conntry. I can see no reason why the rules which are 
applied to determine the question of double patenting when 
United States Patents are involved are not also applicable 
when the question is whether the invention has been first 
patented in a foreign country. 

Sawyer Spindly Co. v. Carpenter, 133 0. G. 240, (when 
the relation of generic and specific claims exists). 
For the reason stated in Stiff v. Gilbraith, 107 0. G. 532, 
I am of the opinion that the second clause of section 4887 of 
the Eevised Statutes as amended March 2, 1903, was not in- 
tended to have and should hot be given, a retroactive effect. 
Marconi v. Shoemaker, 131 0. G. 1939. 
Second paragraph. This should not be construed retroac- 
tive. "To give the TJ. S. application filed subsequently to the 
date of the act the benefit of the foreign application filed prior 
to the act, would make the act retroactive and might disturb 
vested rights and render invalid patents which were valid 
before the act, in the same manner as would the extension of 
the provisions of that act to applications filed in the TJ. S. 
prior to the date of the act." 

DeFerranti v. Sindmark, 128 0. G. 610. 
A decision in favor of applicant under the statute is not 
apnealable by an opponent in an interference proceedincr. 

Gueniffit, Benoit, and Nicault v. Wichtorsohn. 117 0. G. 
1492. 
Amendments apparently date back to time of filing of appli- 
cation so far as bar of two A-ears public use is concerned. 
Edison v. American Mutoscope Co., 110 F. E. 660. 
But it does not relieve against abandonment. 

E. P. Casalonga, 105 6. G. 261. 
The act of March 3, 1903, applies to all applications pend- 
ing whether filed before or after its passage. 
Klingelfuss, 104 0. G. 2149. 
The words '"'previously patented in a foreign country" must 
then be taken to mean "patented according to the laws and 
usages of such foreign countr}^^ provided a substantial monop- 
oly is thereby granted. 

Atlas Glass Co. v. Simonds Mfg. Co., 102 F. R. 647. 
The date of the provisional specifications' filing is the date 
of filing of the British Patent. 

In re Swinburne, 99 0. G. 1625. 
An instrument which gives only limited and temporary pro- 
tection is not the patent contemplated bv the statute (4887 
R. S.). 

Societe Anon^rme Pour La Transmission De La Force Par 
L'Electricite, 97 0. G. 604 F. R. 



47 FOKEiGN PATENTS. Rule 29 

"Where a British patent to applicant became void prior to 
the filing of the United States application, by reason of fail- 
ure to pay a renewal fee. Held properly rejected for that 
reason, since no valid patent could issue to him. 
Armstrong, 1895 C. D. 18, 71 0. G. 1615. 
Where there are two foreign patents for a subject matter 
that is properly claimed in one application for a U. S. patent, 
the IT. S. patent should be restricted in view of the one having 
the shortest term. 

Unsworth, 1879 C. D. 69. 
If an Anierican patent is divisible, and one or more foreign 
patents have been granted for part of the invention secured by 
the American patent, a reissue may be had omitting the parr 
included in the expired foreign patents, or a disclaimer of 
such part included in a foreign patent forfeited for nonpay- 
ment of fees. 

Pulvermacher, 1876 C. D. 154, 10 0. G. 2. 
If only a provisional specification is enrolled in England it 
is not patented there. 

Lowry, 1869 C. D. 85. (See Paile 37.) 
Eelates to matter claimed, only in the foreign application. 
Commercial Acetylene Co. v. Searchlight Gas Co., 197 F. 

E. 908 (act is not retroactive). 

It seems to be what is claimed in the British patent tlmt is 
to be considered. 

Acme Acetvlene A. Co. v. Commercial Acelvleis Co., 192 

F. E. 321. 

The "Ausgegeben" date is the one contemplated for German 
patents. 

Merrell-Saire Co. v. Natural Milk Co., 22 Fed. 913. 
The identity of the foreign patent must appear in its claim. 
Siemens v. Sellers, 123 U. S. 276 ; Westinghouse Elec. & 
Mfg. Co. V. Stanley Instrument Co., 138 F. ■ E. 823 ; 
Sawyer Spindle Co. of Maine v. Carpenter, 133 F. E. 
238: Commercial Co. v. Fairbank Co., 135 U. S. 176.; 
\Yalker on Patents (4th ed.), 150; Eobinson on Pat- 
■ entS; sec. 623; Bate Eefrigerator Co. v. Sulzberger, 157 
U. S. 1 ; Sawyer Spindle Co. v. Carpenter, 143 F. 
E. 976; United Shoe Mach. Co. v. Duplesses Shoe 
Mach. Co., 148 F. E. 31; Diamond Meter Co. v. West- 
inghouse Elec. & Mfg. Co., 152 0. G. 704; Thomson- 
Houston Elec. Co. V. McLean, 153 F. E. 833; Gueniffet, 
Benoit and Vecault v. Wechorsohn, 131 0. G. 1685. 



Rule 30 EEQUISITES OF APPLICATION, 48 

THE APPLICATION. 

Rule 30. Requisites of Application. 

Applications for letters patent of the United States 
must be made to the Commissioner of Patents, and 
must be signed by the inventor, or by one of the per- 
sons indicated in Rule 25. (See Rules 26, 33, 40, 46.) 
A complete application comprises the first fee of $15, 
a petition, specification, and oath ; and drawings, when 
required. (See Rule 49.) The petition, specification, 
and oath must be in the English language. All papers 
which are to become a part of the permanent records 
of the office must be legibly written or printed in 
permanent ink. 

Eev. Stat., sees. 4888 to 4892. 

CONSTRUCTIONS. 
(1) Date oe Filing. 
(?) Peocess. 

(3) Application as a Eeduction to Peactice. 

(4) Additional Cases. 

(1) Date of Filing. 

An unsigned application filed, then a carbon copy signed, 
then a properly written original, the last is the date of filing 
in absence of special circumstances. 
Gilmore et al., 238 0. G. 1093. 
If the application is altered after being executed it is in- 
sufficient to give a filing date to establish a constructive re- 
duction to practice. 

Ames V. Sindstrom, 167 0. G. 241, 168 0. G. 250. 
Whether an application with a defective oath gives date of 
filing. 

Mygatt, 160 0. G. 773. 
A subsequent application, though not a division, may be a 
continuation of an older application when the two have com- 
mon subject matter. In such case the applicant is entitled to 
the date of the original for the subject matter which is com- 
mon to both. 

Pruse, 157 0. G. 208. 



49 EEQUisiTES OF APPLICATION. Rule 30 

A claim introduced into the application by amendment 
relates back to the date of filing the application. 

McFarland v. Watson and Walson, 146 0. G. 257. 

There are good reasons for refusing to give filing dates to 
application papers until various formalities have been com- 
plied with. Where the informalities are discovered by the 
Office w^ithout undue delay; but where the application has been 
examined and considerable time has elapsed before the neces- 
sary corrections are required there should be no change in 
filing dates except in those cases where the Office is clearly 
without authority to entertain the application until the cor- 
rections are made. 

Dukesmith v. Corrington v. Turner, 1906 C. D. 436, 125 
0. G. 348. 

These requirements should be insisted upon before giving 
the application a filing date. 

Sassin, 1906 C. D. 205, 122 0. G. 2064. 

The application should not be filed until all the drawings 
are received. If the omitted drawing is subsequently filed the 
Primary Examiner will consider a petition to give the appli- 
cation the filing date of the remainder of the papers. 
Michaelis, 1906 C. D. 1231, 121 0. G. 1349. 

Fifteen dollars, a sketch, and a request that the Office send 
blanks for making an application can not be considered even 
an incomplete application. The fifteen dollars should simply 
be entered to the sender's credit. 

Elberson, 1906 C. D. 94, 121 0. G. 338. 

As indicated, applications shall not be given serial numbers 
as complete applications and forwarded to the examining 
division for examination (1) when the petition has not been 
signed by the inventor; (2) when the specification and claims 
have not been signed by the inventor and the signature at- 
tested by two witnesses (sec. 4888, Eev. Stats.) ; (3) when 
the drawing has not been signed by the inventor or his at- 
torney in fact and the signature attested by two witnesses 
(4889, Eev. Stats.), and (4) when the oath to the application 
does not fill the requirement of sections 4887 and 4892, Ee- 
vised Statutes. 

The requirements of section 4896, Eevised Statutes, respect- 
ing the right of executors or administrators to make applica- 
tion for a patent for the invention of a deceased person must 
also be observed before the application will be considered as 
complete and forwarded for examination. 
Order, 120 0. G. 1001. 
Only one figure was shown in the drawing, but three were 



Rule 30 KEQUISITES OF APPLICATIOlSr. 50 

referred to. Date of application that of the filing of the last 
two drawings. 

Ehrendriech, 1904 C. D. 75, 109 0. G. 375. 
The defects in the original application were such as called, 
for correction by amendment, and none of the necessary parts 
of a complete application were lacking, the date of filing will 
not therefore be made later. 

Brough, 1904 C. D. 39, 108 0. G. 564. 
An application, signed Charles Prince de Loewenstein, re- 
quired to be signed by applicant with his actual name, but 
given a date as an imperfect application in view of fact that 
otherwise application would be barred by foreign applications. 
Charles Prince de Loewenstein, 1904 C. D. 25, 108 0. G. 
562. 
Date of payment into treasury of fee, and not date of cer- 
tificate receipt, governs. 

Council, 1903 C. D. 495, 107 0. G. 2235. 
A petition granted that certain papers be entered as a com- 
plete application, the question being as to whether or not the 
case admitted of illustration by a drawing. 

Kozminski, 1903 C. D. 42, 103 0. G. 429. 
Specification written in fugitive ink returned. Petition to 
give application date of filing of such specification refused. 
Webster, 1902 C. D. 456, 101 0. G. 2570. 
A wrong specification filed by mistake not a complete appli- 
cation. Page 97 0. G. 551, 1901 C. D. 151, but see Lawson, 
101 0. G. 1833. 

An invention for a certain kind of leather could not be 
illustrated, therefore date of filing retained through a drawing 
might be required later. 

Kozminski, 103 0. G. 93. 
Seems to have been held a complete application when all the 
formal parts were present notwithstanding the attorney alleged 
the specification belonged to one application and the drawings 
to another. 

Lawson, 1902 C. D. 419, 101 0. G. 1833. 
All ink to be subjected to a chemical test. 

Order 1,506. 101 0. G. 1135. 
An application complete in all respects except that a wrong 
specification is filed with it, is to be treated as an incomplete 
application and given the date at which the corrected papers 
are filed. 

Page 97, 0. G. 551, 1901 C. D. 156. 
The date of filing of the application is the date at which all 
the parts in proper form are received. 

Ex parte Arndt, 1900 C. D. 167, 93 0. G. 751. 



51 EEQUISITES OF APPLICATIOjST, RuIg 30 

Discretion of Examiner to require the use of permanent ink 
iu papers offered for filing at this Office. 
Eitter, 1891 C. D. 243, 57 0. G. 1883. 

(2) Process. 

All applications for processes alone should be entered as 
filed complete when all the parts except the drawinar, model, 
or specimen are filed. (Eussell, 84 0. G. 2021, 1898 C. D. 
208.) 

Schmidmer, 1905 C. D. 74, 115 0. G. 249-250. 
When the application is drawn to cover a process and dis- 
closes the invention sufficiently to permit of examination on 
the merits, although no drawing is furnished. Held that it 
must be given the time of filing as the date of application, 
although a drawing is subsequently found to be desirable, and 
is required not to show the invention, but as showing some 
means for carrving into practice. 

Ludington^ 1902 C. D. 241, 100 0. G. 236; Eussell, 1898 
C. D. 208, 84 0. G. 2021. 

(3) Application as a Reduction to Practice. 

The application considered complete, for the purpose of a 
constructive reduction to practice, although the oath was taken 
before one not competent to administer it. 

Dalton and Magnus v. Wilson, 224 0. G. 741. 
The legal conclusion that the invention is completed or con- 
structively reduced to practice when the application is filed 
applies onlv in case of an allowable application. 

Haskell v. Miner v. Ball. 1904 C. D. 131, 109 0. G. 2170. 
An application is a reduction to nractice, if allowable. 

Osborn v. Hotsapillar, 1903 C. D. 47, 102 0. G. 1296. 
Oath must identify the applications to which it relates. 

Heusch, 1899 C. D. 172, 88 0. G. 1703. 
An application is a constructive reduction to practice. 
Early in the history of this court, the question was presented 
for our determination, and for the reasons given in the opin- 
ion delivered by Chief Justice Alvey, the court adopted the 
doctrine maintained in the Patent Office (Porter v. Louden. 
1895 C. D. 707, 73 0. G. 1551, 7 App. D. C. 64-72). 
Davis V. Garrett, 1906 C. D. 724, 123 0. G. 1991. 
An application is evidence of perfected invention when suf- 
ficient to authorize the granting of a patent. 

Lindsay v. McDonough, 1891 C. D. 89, 55 0. G. 1402. 
Sworn to in blank. 

Ayres, 1890 C. D. 103, 51 0. G. 1944. 



Rule 31 INCOMPLETE APPLICATIONS. 52 

A patent granted upon a specification sworn to in blank and 
subsequently filled out without the inventor having a chance 
to examine it is void ab initio. 

Benton, 1882 C. D. 3, 23 0. G. 341. 
The application is not reduction to practice. 

Crane v. Whitehead and Atherton, 1876 C. D. 26, 7 0. 
G. 219. 

(4) Additional Cases. 
Cases passing on the subject matter of this rule. 

Kumley, 1904 C. D. 240, 110 0. G. 2235; Barr Car Co. 
V. Chicago & Northwestern Eailway Co., 1901 C. D. 
521, 97 0. G. 2534; see 91 0. G. 2211. 

Rule 31. Incomplete Application not Filed. 

An application for a patent will not be placed upon 
the files for examination until all its parts as required 
by Rule 30 shall have been received. 

Every application signed or sworn to in blank, or 
without actual inspection by the applicant of the peti- 
tion and specification, and every application altered 
or partly filled up after being signed or sworn to, will 
be stricken from the files. 

Completed applications are numbered in regular 
order, the present series having been commenced on 
the 1st of January, 1915. 

The applicant will be informed of the serial number 
of his application. 

The application must be completed and prepared for 
examination within one year, as indicated above, and 
in default thereof, or upon failure of the applicant to 
prosecute the same within one year after any action 
thereon (Rule 77), of which notice shall have been 
duly mailed to him or his agent, the application will 
be regarded as abandoned, unless it shall be shown 
to the satisfaction of the Commissioner that such de- 
lay was unavoidable. (See Rules 171 and 172.) 

Eev. Stat, sees. 4888, 4889, 4890, 4891, 4892, 4894. 



53 INCOMPLETE APPLICATIONS. Rule 31 

CONSTRUCTIONS. 

If the first fee is not paid within a year the application is 
abandoned. 

Knrz, 119 0. G. 961. 
A petition to strike an application from the files because 
signed and sworn to in blank after assignment and after a 
year's delay refused. If a patent had been granted on their 
application, applicants would have been estopped from denying 
its validity. 

Force v. Sawyer-Boss Mfg. Co. et al., Ill F. E. 902. 
Siemons Halske Electric Co. v. Duncan Electric Mfg. 

Co. et al., 143 F. E. 157. 
Mathews Gravity Carrier Co. v. Lister et al., 154 F. E. 
490. 
It is believed that in this case, by a parity of reasoning, he 
could be estopped from denying that the application which he 
has sisrned was properly executed. 
Shaver, 131 0. G. 2422. 
Motion by party in interference to strike application from 
files because not properly signed and verified. 

The objection to the legality of G's application is purely 
technical, but if sustained would result in removing him from 
the field of claimants to this invention, since public use of the 
invention has intervened to operate as a bar to the filing of a 
new application. The result would, therefore, be irreparable 
injury to G. Such purely technical objection should not be 
sustained except on the clearest proof. 

In the course of the proceedings G had made affidavit that 
he was the inventor of the subject matter several times. 
Davis V. Garrett, 1906 C. D. 724, 123 0. G. 1991. 
The question of striking Hopkin's application from the files 
because of alleged alterations therein after it was sworn to is 
not a matter for the action of the Primary Examiner but is 
exclusively within the jurisdiction of the Commissioner. 

The inking in of a drawing is not a material alteration 
under these rules. 

Hopkins v. Scott, 1903 C. D. 261, 105 0. G. 1263. 
It is exclusively within the jurisdiction of the Commissioner 
whether an application shall be stricken from the files. 
Snider v. Bunnell, 1902 C. D. 460, 101 0. G. 2572. 
Where it appeared that the sheets of the specification were 
removed, and other substituted, application removed from 
files (see Official Gazette, June 1, 1897) (79 0. G. 1369). 
Altman, 1897 C. D. 52, 80 0. G. 1475. 



Rule 32 PAKTS OF application". 54 

It is a clear violation of this rule for the solicitors to sub- 
stitute ■ a clean draft of an application for one altered as to 
the description and signed and sworn to by the applicant. 
Such an application should be stricken from the files. 
Sheridan v. Latus, 1883 C. D. 76, 25 0. G. 501. 

Rule 32. All Parts of Application to be Filed To- 
gether. 

It is desirable tbat all parts of tbe complete appli- 
cation be deposited in tbe office at tbe same time, and 
tbat all tbe papers embraced in tbe application be 
attacbed together; otherwise a letter must accompany 
each part, accurately and clearly connecting it with 
the other parts of tbe application. (See Rule 10.) 

The Petition. 

Rule 33. Petition. 

Tbe petition must be addressed to tbe Commis- 
sioner of Patents, and must state the name, residence, 
and post-office address of the petitioner requesting 
the grant of a patent, designate by title the invention 
sought to be patented, contain a reference to the 
specification for a full disclosure of such invention, 
and must be signed by tbe inventor or one of tbe 
persons indicated in Rule 25. 

Eev. Stat., sec. 4888. 

CONSTRUCTIONS. 

Applicant's address at which he customarily receives his 
mail. Care of attorney not sufficient. Object to communicate 
with applicant direct. 

Offi'cial Notice, 225 0. G. 375. 

SPECIFICATION. 
Rule 34. Written Description. 

The specification is a written description of the in- 
vention or discovery and of tbe manner and process 



55 wKiTTE:sr desceiptiox. Rule 34 

of making, constructing, compounding, and using the 
same, and is required to be in such full, clear, concise, 
and exact terms as to enable any person skilled in the 
art or science to which the invention or discovery ap- 
pertains, or with which it is most nearly connected, 
to make, construct, compound, and use the same. 

Eev. Stat., sec. 4888. 

CONSTBUCTIOI^^S. 

See "Protection of Invention" having special reference to 
electrical methods and bearing of the doctrine of equivalents on 
function and method, a paper read October 5, 1916, before the 
Examining Corps of the United States Patent Office, by 
Eichard E. Marine, Principal Examiner, Division Twentv-Six, 
U. S. Patent Oitice. 

Chemical Inventions and Discoveries, a paper read Novem- 
ber 23, 1916, before the Examining Corps of the United 
States Patent Office bv George S. Elv, Principal Examiner, 
Division Thirty-One, U. S. Patent Office. 

The gist of a disclosure is that it be so full as will enable 
those versed in the art to thereafter use the device, and where 
such use, practice, mechanism, formula, etc., are fully dis- 
closed, the requirements of the law are satisfied without claim- 
ing every advantage such device ma}^ have. 

Mead-Morrison Mfg. Co. v. Exeter Mach. Works, 225 F. 
E. 497. 

The suggestion of equivalents used in construing the claims. 
Hildreth v. Auerbach, 223 F. E. 651. 

If the growth of the patent system at the time of the deci- 
sion of Merrill v. Yeomans, 94 U. S. 568, had reached a stage 
in its progress which warranted the court in saying that there 
was no longer "excuse for ambiguous language or vague de- 
scriptions," we may at this time speak even more strongly and 
say that an invention depicted in such slovenly and illconsid- 
ered and inconclusive language as this is not yet ready for 
protection by letters patent. 

International Mausoleum Co. v. Seevert, 197 Fed. 940. 

Disregarding the evidence, we have the case of an element 
not defined, vital to the validity of the patent as now con- 
strued by the appellee, and which is utte'rly without function 
or use. Within the loosest construction of the statute requir- 
ing full, clear, concise description, the appellee's contention 



Rule 34 WRITTEN DESCRIPTION. 56 

respecting the lawful scope of the patent in suit can not he, 
sustained. (Cases.) 

Wolff Truck Frame Co. v. Am. Steel Foundry, 195 Fed. 
945. 
But the patentee is not confined. He expressly says that the 
machine is capable of "a large range of modifications within 
the scope" of the invention. 

Sleiger v. Waite Grass Carpet Co., 194 F. 883. 
It can come under no claim of the patent, and is so diver- 
gent from any description that, if it is under the patent, it 
must be regarded as within the reservation, a mere modifica- 
tion without material departure from the principle and spirit 
of the invention. 

Phoenix Knitting Works v. Eich, 194 F. R. 723. 
This contention is made notwithstanding the manifest fact 
that the mechanism which feeds the wire forward is in con- 
tinuous action. The argument seems to us purely fanciful. 
It substitutes a metaphysical intermittency for a mechanical 
one. 

American Steel & Wire Co. v. Denning Wire & Fence 
Co., 194 F. E. 14. 
I am further of opinion that a person reasonably skilled in 
the art could not from description alone have made an opera- 
tive machine, because he would have to have worked out for 
himself the proportions which are just as important as the 
combination so far as successful operation is concerned. 

Electro-Dvnamic Co. v. Westinghouse E. & Mfg. Co., 191 
F. E. 508. 
As is frequently the case when a patentee attempts ex post 
facto a physical explanation of what he has found by experi- 
ment, a collateral issue is raised which diverts attention from 
what is more important — the means whereby he effects his 
result. 

Combustion Utilities Corp. v. Worcester Gaslight Co., 190 
F. E. 161. 
Whatever may be the correctness of the theory of operation 
if a new application of old means is sufficiently described to 
enable those skilled in the art to produce a new and useful 
result, that is enough. Diamond Eubber Co. v. Consolidated 
Eubber Co., 220 U. S. 428, 31 Sujp. Ct. 4444 (Sup. Ct. of U. 
S., April 10, 1911). 

Combustion Utilities Corp. v. Worcester Gaslight Co., 190 
F. E. 159. 
He refers to the various terms which he uses. Inasmuch as 
there has been some contention in reference to his meaning, 



57 WEITTEN DESCRIPTION. Rule 34 

I quote fully the description of his manner of employing tech- 
nical words. 

National Electric S. C. v. United Wireless Tel. Co.. 189 

F. E. 730. 

A patentee who has sufficiently described and distinctly 
claimed his invention is entitled to every use to which his 
device can be applied, whether he perceived or was aware of 
such uses at the time he claimed and secured his patent or not 
(cases). 

Acme Truck & Tool Co. v. Meredith, 1883 F. 14125. 
Within the limits of accuracy and reasonable clearness 
applicant is entitled to state his invention in his own language. 
Williams, 183 0. G. 503-4. 
It is objected that the advantage of avoiding side tones is 
not mentioned in the specifications. This is true, but the 
omission was not fatal if the advantage was necessarily 
achieved through the invention. (72 F. 67, 73, 75; 115 F. 
886, 895; 117 F. 410, 415; 176 F. E. 100, 107.) 
Electric Co., 182 F. E. 998. 
Purelv laudatory statements have no place in a specification. 

Gregg. 181 0. G. 266. 
A statement that certain electrical arrangements shown in 
the dravdng are not absolutely essential, are general statements 
of a character that are continually made and considered ad- 
missible. 

Jennings, 178 0. G. 1151. 
The drawings accompanying the specification and referred 
to in the descriptive parts thereof will be examined to ascer- 
tain the true meaning of the terms used in describing the in- 
vention. (E. S. 644889, 98 W. S. 31-38,' 64 F. E. 594, 106 
F. E. 918, 120 F. E. 267, 135 F. E. 95, 145 F. E. 923.) 
Steiner, etc., v. Tabor Sash Co., 178 F. E. 831-836. 
Specifications and claims must be broad enough to cover the 
claimed ran^e of equivalents. Eead Holliday & Sons v. 
Shulze-Berge"; 78 F. 493. 
Ellis, 167 0. G. 982. 
We, however, think that patents are grants made in con- 
sideration of discoveries which promote the progress of science 
and the useful arts, and that they are to be construed liberally 
so as to effect their real intent. 

Bossert Electric Const. Co. v. Prott Chuek Co., 159 0. 

G. 747. 

We would regret to be compelled to decide a case by the 
acceptance or rejection of a theoretic explanation upon which 



Rule 34 WRITTEN DESCRIPTION. 58 

it is still possible that authorities in science disagree. Su- 
preme Court. 

Steward v. American Lava Company, 149 0. G. 602. 
In the construction of a patent, the omission of the patentee 
to point out or refer in his specification or claims to the spe- 
cial feature which he subsequently maintains is the most im- 
portant part of his invention, is very significant, and should 
be carefully scrutinized. If this feature be an advantage, as 
now claimed, it is strange that no allusion is made to it in the 
specification. 

Fastner Co. v. Kraetzer, 150 U. S. 111. Ended in Sterl- 
ing Co. V. Eust Boiler Co., 144 P. E. 853-3. 
As the term '^Vheel'-' has not received a special meaning in 
the art the parts pertaining to the different stages of a turbine 
may be called a wheel. 

Lindmark v. Hodgkinson, 137 0. G. 228. 
If a machine or apparatus is claimed and it is desired to 
claim the process also, other means of carrying the process 
out, if not obvious, must be shown. 
White, 136 0. G. 1771. 
Where the meaning of an expression is clear, no reason 
exists for delaying the prosecution of a case by insisting upon 
merely formal changes in the language. 
White, 134 0. G. 2027. 
A description sufficient for those skilled in the art is enough. 

Hopkins v. Kewman, 134 0. G. 2028. 
"This fact and the failure to mention the notches shown in 
Fig. 3 leave it uncertain whether the termination of the end 
of the strip in such a position in this figure as to show a notch 
rather than a passage was anything more than an accident of 
the draftsman. It appears certain that Fullagar had no com- 
prehension of the importance of the notch construction. 
Emmet v. Fullagar, 1906 C. D. 386, 124 0. G. 21.78. 
Means for narrowing and widening a knit tube. Certain 
"pickers" necessary to the operation omitted, but reference is 
made to an ordinary stocking knitter in which such devices 
are -used. Held a sufficient description. 

Kilbourn v. Heiner, 1906 C. D. 367, 124 0. G. 1842; 
Sassin, 122 0. G. 2064. 
Since the claims are to be construed with reference to the 
specification and to the applicant's iinderstanding and intent 
in using the particular terms which appear in. the claims, it 
must be held that there is sufficient warrant for retaining 
Figs. 2 and 5. 

Engel, 19.06 C. D. 109, 121 0. G. 1011. 



59 WRITTEN DESCRiPTioisr. Rule 34 

Descriptive matter which sets forth alleged advantages over 
the prior state of the art in language broad enough to apply- 
to a prior patent, as well as to applicant's construction should 
be canceled. 

Kenney, 1905 C. D. 546, 119 0. G. 3237. 

Descriptive matter in a specification which consists merely 
in statements relative to the construction and operation of 
specific prior devices, made with the idea of pointing out the 
purpose and application of applicant's improvements, is not 
objectionable as being in derogation of the inventions of others. 
Sjungstrom, 119 0. G. 2335. 

Statements in the specification setting forth the purpose 
and function of the construction claimed are not objectionable 
and should be distinguished from mere laudatory statements 
inserted for advertising purposes. 

Schoshusen, 1905 C. D. 314, 116 0. G. 3008. 

It is not alleged that the invention can not be fully and 
readily understood from the present specification, nor does it 
appear that the claims are rendered indefinite or ambiguous 
by the word "stretcher" or that the applicants' use of the 
work is absurd or clearly erroneous. 
Welch, 115 0. G. 1850. 

The purpose of the specification is to describe the construc- 
tion and operation of the invention sought to be patented. 
Statements of mere obvious facts are objectionable, because ' 
they are mere surplusage. 

The law gives the applicant the right to employ equiva- 
lents, and a statement of this fact is also unnecessary. 
Champ, 1905 C. D. 54, 114 0. G. 1837. 

A specification for a patent should be confined to a descrip- 
tion of the structure of the device and the manner of its use. 

Theoretical discussion suitable for an advertising circular 
should be excluded. 

Wellington, 1904 C. D. 564, 113 0. G. 3318. 

The proceedings in the Office leading to the grant of a 
patent are regarded by the courts as having an important 
bearing upon the validity and scope of the claims. 

They are also of importance if the question of granting a 
reissue is at anv time raised. 

Lewis & linger, 106 0. G. 543. 

Good practice requires that applicant distinguish between 
what is old and what is regarded as new. 

In ex parte Blakeman (98 0. G. 791) it was said that 
statements which were merely laudatory of the applicant's 
invention should not appear in the specification; but this 



Rule 34 wRiTTEjsr description. 60 

ruling does not apply to ordinary descriptive matter which 
attempts to distinguish between what is old and what is new. 
Eynon, 1903 C. D. 231, 105 0. G. 499. 
Private identifying mark must be removed from the speci- 
fication. 

Ball, 1902 C. D. 326, 100 0. G. 2602. 
An important discussion of the subject as to the relation 
of the specification to claims. 

The Carnegie Steel Company, Ltd., v. The Cambria Iron 
Company, 1902 C. D. 592, 99 0. G. 1870. 
It is not necessary to state what others have failed to do, 
but merely what applicant has done. Laudatory matter should 
be canceled. 

Blackman, 98 0. G. 791. 
And this is an answer to the contention based upon the 
peculiar property of American asphalt to interpose a shield 
against a blasting heat to protect itself from destruction, a 
virtue in American asphalt, no doubt. If it is a virtue re- 
sulting from a peculiar application of heats there is nothing 
in the record to show that Perkins was aware of it. He cer- 
tainly did not reveal it in the specifications of his patent nor 
describe it as part of his method. 

The United States Eepair & Guaranty Co. v. The Assy- 
rian Asphalt Co., 98 0. G. 582 and 584. 
A well known part to which the improvement is attached 
must be shown so that one skilled in the art would recog- 
nize it. or else must be described. 

Morse, 1901 C. D. 260, 97 0. G. 2982. 
It is not sufficient to refer to another pending application 
for the description of a part. 

Scott, 1901 C. D. 59, 95 0. G. 2683; Kellog, 1905 C. D. 
84, 120 0. G. 2754. 
The punctuation of the specification and claims is to be 
adhered to in printing, 
95 0. G. 1054. 
It is the well-settled policy of the Ofiice to permit an appli- 
cant to use his own terms of reference so long as their use 
does not lead to ambiguitv. 

Hollis, 86 0. G. 489 f Welch, 115 0. G. 1850. 
The proximate and not the remote use of the device is to 
np sI'fiTPn 

Ex parte Hinkle & Ashmore, 1899 C. D. 176, 88 0. 
G. 2410. 
Where an application originally contained claims for a 
method, a product, and as apparatus for carrying out the 



61 WRITTEN DESCRIPTION. Rule 34 

method, and upon an Office requirement of division the appli- 
cant canceled the claims for the apparatus, and where the 
disclosure of the apparatus does not make it clearer how the 
method might be carried out, the drawing and description 
of the apparatus should be canceled. 

Hofely V. Eedlefsen, 1893 C. D. 94, 64 0. G. 559. 
An applicant is entitled to state as specifically and cate- 
gorically as he chooses the difficulties and troubles which are 
cured or ameliorated by his improvement, but he is not en- 
titled to state such matters in a way that amounts to a recital 
of the history of the art as he understands it, combined with 
an argument as to the importance of his improvement. 
Johnston, 1892 C. D. 150, 60 0. G. 295. 
The history of the art is not proper in a specification. 

Wadsworth, 1900 C. D. 139, 92 0. G. 1798. 
An applicant will not be permitted to use words in his 
specification that are likely to create an ambiguity in the 
strict construction of his claims, and an objection by the 
Primary Examiner in such a case is properly taken. 
Petzold, 1892 C. D. 39, 58 0. G. 1091. 
Presenting at the Patent Office an inferior form of inven- 
tion while claiming to have a better form in possession dis- 
cussed with reference to Campbell v. James (C. D. 1882, 67). 
Ligowsky v. Peters v. Hisey, 1891 C. D. 220, 57 0. G. 
1593. 
A reference to a copending application for a description of 
a device is not sufficient. 

Chadwick, 1891 C. D. 169, 57 0. G. 124. 
While the defects which applicant designs to remedy may be 
pointed out, this may not be done relative to the invention 
of another specifically. 

Shaw, 1890 C. D. 31, 50 0. G. 1129. 
The petition omits any reference to the specification for a 
full disclosure of the alleged invention. It is evident that 
without such reference it is defective. No reason is shown 
why the omission may not be cured by the attorney. 
Mason, 1888 C. D. 33-34, 43 0. G. 627. 
The Examiner has no right to require the applicant to 
acknowledge the subject matter shown to be old by the refer- 
ences. 

Massicks and Crooke, 1887 C. D. 20, 38 0. G. 1489. 
The word apparatus is static, machine dynamic. 

Blythe, 1884 C. D. 82, 30 0. G. 1321. 
Modifications should be illustrated and described. 
Howe, 1883 C. D. 102, 25 0. G. 1189. 



Rule 35 DETAILED DESCEIPTION. 62 

Applicant must distinguish between what is new and what 
is old. If he admits that all is old except the combination 
claimed he must substitute a statement to that effect for the 
assertion of novelty in the elements. 

Gilbert, 1879 C. D. 233, 16 0. G. 763. 
The averment in the petition that the applicant is the 
patentee named in a certain English patent is not evidence 
of that fact in an interference proceeding. 
Lauder v. Crowell, 1879 C. D. 177. 
Applicant required to describe in his specification some par- 
ticular manner of constructing his device. 

>Schoonmaker, 1878 C. D. 40, 13 0. G. 595. 
The drawing model and specification should correspond. 

Schoonmaker, 1878 C. D. 40, 13 0. G. 595. 
"In a reissue patent, as compared with the original, there 
is not the same reason for indulgence in the use of vague 
language, because the reissue is taken after the working of 
the machine may be supposed to be understood, and broad 
claims are inserted for the very purpose of being construed 
broadly." 

Hatch V. Moflitt, 15 F. E. 353. 
It is unnecessary to specifically describe a process, well 
known to those skilled in the art, that is used in the embodi- 
ment of an applicant's invention. 

Floyd, 1874 C. D. 104, 6 0. G. 451. 
A reference to a caveat concerns the history and not the 
description of an invention and is not therefore admissible 
in a specification. 

Chubb, 1873 C. D. 234, 3 0. G. 519. 
In applications for patents the Examiner should interfere 
as little as possible with the language chosen by the applicant 
in describing his invention. 

In applications for reissues the applicant should be held 
rigidly to the language adopted in his patent. The rule should 
be liberality with original applications; strict construction 
with applications for reissues. 

Underwood, 18782 C. D. 118, 10. G. 549. 
A discussion of the merits, or demerits, of other patents, or 
inventions, in the body of the specification is improper. 
Williams, 1872 C. D. 46, 10. G. 235. 

Rule 35. Detailed Description. 

The specification must set forth the precise inven- 
tion for which a patent is solicited, and explain the 



63 CLAIMS. Rule 37 

principle thereof, and the best mode in which the ap- 
plicant has contemplated applying that principle, in 
such manner as to distinguish it from other inven- 
tions. 

Eev. Stat., sec. 4888. 
See notes to Eule 34. 

Rule 36. Improvements. 

In case of a mere improvement, the specification 
must particularly point out the parts to which the im- 
provement relates, and must by explicit language dis- 
tinguish between what is old and what is claimed as 
new; and the description and the drawings, as well as 
the claims, should be confined to the specific improve- 
ment and such parts as necessarily cooperate with it. 

See notes to Eule 34. 
Rule 37. Claims. 

The specification must conclude with a specific and 
distinct claim or claims of the part, improvement, or 
combination which the applicant regards as his in- 
vention or discovery. 

E. S. 4888 

HIHTOEY. 

The chaiacter and facilities of the courts should make their 
decisions particularly enlightening on subjects relating to use 
of the English language. I have, for this reason and because 
of the importance of the subject, digested some of the recent 
Federal cases. Of course, this is not intended to take the 
place of the Text Books and General Digests. 

Papers read before the Examining Corp of the U. S. Pat- 
ent Office are : 

History and Purpose of Claims in TJ. S. Patent Law, by 

K J. Brumbaugh, Feb. 11, 1915. 
Multiphcity of Claims, by Wm. E. Pratt, Kov. 16, 1916. 



Rule 37 CLAIMS. 64 

CONSTRUCTIONS. 



(1 
(3 
(3 
(4 
(5 
(6 
(7 
(8 
(9 
(10 

(11 
(13 

(13 
(14 
(15 
(16 
(17 
(18 
(19 
(20 
(31 
(33 
(33 
(34 
(35 

(36 

(37 



In General. 
Procedure. 
Words and Phrases. 
Form of Claim. 
Construction of Claim. 
Reference to the Specification. 
Generic and Specific. 
Combination. 
Elements. 
Eeference Letters. 
Multiplicity of Claims. 
Means, Mechanism, Etc. 
Process — Function of a Machine. 
Difference in Claims. 
Indefiteness, Vagueness. 
Alternative — Modifications — Equivalents. 
Articles of Manufacture. 
Process — Sub-Process. 
Printed Matter. 
Introductory Clause. 
Expression of Degree in Claims. 
Process, Process and Article Claims. 
Positive Inclusion of Elements of Claims. 
Eeading Words, Etc., Into. 

"Whereby" Clause in Claims and Operative En- 
vironment. 
Concluding Clause in Claim. 
Analysis of Claims. 



(1) In General. 
Claims. A definition can not be given except after the 
most perfect conception of the subject of the definition. The 
truth is, no word can be truly defined until the exact idea is 
clearly understood in all its relations which the word is de- 
signed to represent. 

Quoted from Matthews' '^ords, Their Use and Abuse," 
by Andrews' American Law, p. 96. 
Eemark by U. S. Supreme Court. The use of ill-defined 
abstract phraseology is the frequent source of error. It re- 
quires no great ingenuity to mystify a subject by the use of 
abstract terms of indefinite or equivocal meaning. 

Boyden Power-Brake Co. v. Westinghouse, 170 U. S. 537. 

It appears to me clear that the crying abuse of superfluous 

and obscure claims is due to the failure on the part of both 



65 CLAIMS. Rule 37 

the Examiners and the attorneys to see to it that each claim 
has a definite point in view, is concise, and that the claims of 
a set are self-distinguishing and self-classifying. It is quite 
possible that the profession has made a fetish of form. 

Completeness of wording is very different from completeness 
of sense. 

Assistant Com. Clay ex parte Brown, 335 0. Gr. 1335. 
Previous to the Patent Act of 1836, which established a 
Board or Bureau composed of competent examiners, patents 
had frequently been adjudged invalid from the insufficiency 
of the specification. Few inventors, or even learned lawyers, 
were capable of correcting and clearly setting forth in a 
specification the proper limits of the just claim of the inven- 
tion. 

Burr V. Duryee, 1 Wall. 175. 
These "separately are termed" subordinate integers of the 
combination, referring to the elements of a combination. 
Eoberts' British Patents. 
"The meticulous American claim." 
British Comptroller of Patents. 
To define a new thing accurately so that it may all be 
embraced within the description, but nothing included which 
is not essential, is an art of itself, and as Justice Brown 
indicated, a difficult art, one requiring long and careful train- 
ing and in the practice of which oversights and mistakes of 
judgment are bound to occur. 

Com. Ewing in Litle Jr. v. Armstrong, 232 0. G. 935. 
As stated by the court (Morgan, 179 0. G. 242), certain 
devices are common to all arts as a whole because they are 
adapted for use in many situations. 
Fisher, 229 0. G. 1255. 
The claims are therefore rejected on the ground that they 
are broader than applicant's conception and are presented for 
the purpose of covering something different from the essential 
elements of his idea of means, the production of which, 
moreover, has involved inventive work of a very high order. 
Foutts, 227 0. G. 741; see United Wireless Tel. Co. v. 
National Elec. Signally Co., 198 F. E. 386. 
It is not the legitimate office of a patent claim to state 
merely a mechanical problem or function. It must also 
clearly indicate the mechanical means for its solution or 
accomplishment. 

Union Special Mach. Co. v. Singer Mfg. Co., 215 F. E. 
598-602. 
Each claim should be directed at some function, step, or 



Eule 37 CLAIMS. 66 

advantage to give it individuality; it should have a charac- 
terizing thought or point by which it can be identified; and if 
the court which is to construe the claim can find this domi- 
nant thought, its task will be simplified. 

Denison, J., in Scaife & Sons Co. v. Falls City Woolen 

Mills, 309 F. E. 210-213. 

It has always been the policy of the Office to allow some 

latitude to applicants in drawing their claims — provided, of 

course, the claims are clear of the prior art and are clear in 

their meaning. 

Pease, 202 0. G. 631. 
The patent statutes require the patentee himself to claim 
and define his invention, so that the public may know its 
rights, and so that there shall not be imposed upon the courts 
the burden of constructing upon a hearing new claims from 
the interpretation that experts may place upon language of 
the most sweeping and general character. Quoted from the 
Bell Tel. cases in 

United Wireless Telegraph Co. v. National E. S. Co., 
198 Fed. E. 39-5. 
There is only one claim in the English patent. But that 
claim, under the English patent system, entitled the patentees 
to their entire invention, and is at least as broad and compre- 
hensive as all four claims of the American patent. 

Commercial Acetylene Co. v. Searchlight Gas Co., 197 
F. E. 912. 
See remarks as to assignment of error in 
Lord Baltimore Press., Inc., v. Labombarde, 197 Fed. 
E. 739. 
A pipe with an outer coating composed of an inner layer 
of copper and an outer layer of zinc. It was urged that the 
copper being electrically deposited was superior to the article. 
Cited as a reference. 

This did not appear in the claims, however, unless by say- 
ing that the outer coating was of uniform density, purity and 
thickness, and this was alleged of the reference and the court 
would not reverse the experts of the Office. 
Hodkinson, 182 0. G. 251. 
The fact, however, that the defendant's device may be 
within the language of the claim does not of itself prove that 
it is an infringement. Infringement is not a mere matter 
of words. Authorities cited and commented upon. 

General Electric Co. v. Allis-Chalmers Co., 171 F. 669. 
See this case in Court of Appeals, 178 F. 273. See 
Curtain Supply Co. v. National Lock Washer Co., 178 



67 CLAIMS. " Rule 37 

F. "R. 95. These claims were, however, drawn to cover 
claims in a patent. 
I am inclined to think he did discover them, without him- 
self knowing it, but that he never fully understood or claimed 
them, and that his discovery has become public property. 
General Const. Co. v. IvTelther, 167 F. E. 554. 
A claim may be so prolix as not to comply with the require- 
ment of the statute. 

Lagan, 162 0. G. 538. 
By an ingenious and acute process of analysis nearly every- 
ihing may be resolved into elements which are old. 

Electric Candy Machine Co. v. Morris, 156 F. E. 976. 
The purpose of this requirement is not only to secure to the 
inventor the benefit of his invention, but also that the public 
may know what they are prevented from doing during the 
existence of the monopoly. (Brooks v. Fiske, 15 How. 211, 
214; O'Eeilly v. Morse, 15 How. 62-119.) 
In re Gardner, 140 0. G. 258. 
The courts recognizing the fact that the ordinary inventor 
is not usually skilled in 'technical rules of construction and is 
apt to suppose that his claims protect him in the essential ele- 
ments mentioned in them and that these claims and specifica- 
tions are usually drawn by men who are strangers to and 
ignorant of the art within which they lie, and that even 
skilled solicitors are not infallible in framing technical docu- 
ments, have sanctioned reissues which permit the framing 
of claims adequate to secure the full benefits of the inven- 
tions designed to be protected by the patent laws. 

Crown Cork & Seal Co. v. Aluminum Stopper Co., 96 
0. G. 2573. 
The fact that in its progress through the Patent Office the 
specification and claims of the patent in suit were made more 
clear and accurate so as to express the patentee's actual in- 
vention, affords no reason for casting doubt upon the validity 
of the patent. 

Pullman Co. v. Boston & Albany, 90 C. D. 533. 
Uniformity is necessary to the proper conduct of the 
affairs of the Patent Office. 

Buffalo-Pitts Co., 89 0. G. 2069. 

(2) Procedure. 

The Examiner should not attempt to compel the applicant 
to insert elements in his claim which he does not desire to 
have there. 

Compos, 182 0. G. 719. 



Rule 37 CLAIMS. 68 

The .complainant having canceled all his original claims 
is now estopped to claim the benefit of them, or such a con- 
struction of his present claim as would be equivalent thereto. 
Langan v. Warren Axe & Tool Co., 181 F. E. 146. 
The fact that a new claim was inserted in the application 
by the attorney without any new oath does not render the 
patent invalid as to such claim where it was within the inven- 
tion described in the specification. 

Cutler-Hammer Mfg. Co. v. Union Electric Mfg. Co., 
147 F. E. 266. 
A claim introduced by amendment relates back to the date 
of the filing of the application. 

Mr. Farland v. Walson and Walson, 146 0. G. 257. 
Had the applicant insisted that he was the first to apply 
this device as an aid to the starter, he would no doubt have 
secured the allowance of his claim as first made, without any 
restriction as to manner of pivoting nor as to location of 
gate, whether between, ahead of, or behind the supports. But 
he elected to make the change and must abide the conse- 
quence. 

Eyan v. Metropolitan Jockey Club, 139 F. E. 579. 
Where an applicant before the Patent Oiifice acquiesces in 
the ruling that his claim is not patentable without amend- 
ment, he can not be heard to question whether it is right or 
wrong. 

Computing Scale Co. of America v. The Automatic Scale 
Co., 1905 C. D. 704, 119 0. G. 1586. 
The proceedings in this office leading to the grant of a 
patent are regarded by the courts as having an important 
bearing upon the validity and scope of the claims. (Shepard 
V. Corrigan, 1886 C. D. 116, 34 0. G. 1157; 116 U. S. 593; 
McCorniack v. Graham, 129 U. S. 1 ; Eoemer v. Peddie, 1889 
C. D. 682, 49 0. G. 2151, 132 U. S. 313.) 
Doman, 1905 C. D. 101, 115 0. G. 804. 
They are also of importance if the question of granting a 
reissue is at any time raised. 

Lewis & Auger, 1903 C. D. 303, 106 0. G. 543. 
The Office should not permit claims of doubtful propriety, 
even if the courts have saved the validity of patents having 
such claims by a forced construction. 

McLellan, 1872 C. D. 152; Simonds. 1870 C. D. 23; 
Cornell, 1872 C. D. 120, 1 0. G. 573; Shepler. 1903 
C. D. 17, 102 0. G. 468. 
The action of one Examiner should be at least extremely 
persuasive upon his successor. 
Ealin, 1897 C. D. 174. 



69 CLAIMS. Rule 37 

Applicant should present his whole case at one time by 
both broad and narrow claims. 

Miller, 1900 C. D. 65, 91 0. G. 1034. 
An applicant should present his whole case at one time by 
both broad and narrow claims. 

Snow, 1897 C. D. 48, 80 0. G. 1271. 
If the claims granted are inconsistent with former expres- 
sions of the Office and admissions of the patentee, the logical 
inference is that further examination led to a change of views. 
Sugar Apnaratus Manufacturing Co. v. Garyon Mfg. 
Co., 53 b. G. 920. 
The Patent Office, in cases where the prior art admits of 
such a course, should grant to the applicant a claim or 
claims which will enable him to cover his invention, even 
when an infringer interchanges or reverses some of the ele- 
ments. 

Tobie, 1890 C. D. 28, 50 0. G. 992. 
Cancellation of the claims is an abandonment of the appli- 
cation. 

Lascell. 1884 C. D. 42, 28 0. G. 1274. This is not free 
from doubt. 

Lascell, 1884 C. D. 66, 29 0. G. 861. 

No more than a single device, or combination, should form 
the subject of a single claim. 

Bland, 1897 C. D. 40, 15 0. G. 828. 
A claim for substantially a new method of doing business 
is not patentable. 

Sheldon, 1878 C. D. 44, 13 0. G. 817. 
I do not think it proper to say that the recognized prac- 
tice of the Office discountenances any particular form of 
claim. The mere form itself is of little or no consequence; 
and it is impossible to decide that because the form is bad 
in one case, it will be bad in every other. 

It is the uniform practice of the Office to discountenance 
in a particular case any form of claim which does not set 
forth clearly the nature of the invention, but leaves in uncer- 
tainty the thing which is to be patented. 

Acting Com. Spear in Dahne, 1875 C. D. 66, 7 0. G. 
1095. See also, Haasz, 1873 C. D. 170, 4 0. G. 610; 
The Collins Company, LS72 C. D. 251, 2 0. G. 617; 
Designolle, 1878 C. D. 10, 13 0. G. 227. 
The Office has uniformly allowed some latitude to appli- 
cants in stating in different forms, claims for substantially 
the same invention. 

Martin v. Boyle, Runyan & Patric, 1877 C. D. 106, 12 
0. G. 625. 



Rule 37 CLAIMS. 70 

It is admissible, under proper restrictions, for parties to 
put their claims in different forms to prevent misconstruction 
of them bv the public or bv the courts. 

Shippen, 1875 C. D. 136, 8 0. G. 737; Hahn, 1875 C. 
D. 107, 8 0. G. 597. 

(3) Words and Phrases. 

The words "closed or nearly closed" applied to a magnetic 
circuit is a claim. 

Kuhlman Electric Co. v. General Elec. Co., 147 F. E. 
709. See Dorsey, 1870 C. D. 17. 
Means between certain pumps and their driving means. 
"Between" is not limited to a geometrical location, "the un- 
forced meaning of the language used is that the compensating 
means accomplishes its effect in the action of the driving 
means upon the pumps." 

Lemp V. Eandall & Bates, 1906 C. D. 340, 133 0. G. 319. 
A claim for "lumber partially saturated with sulfric acid" 
objectionable, the words "partially saturated" being inapt. 
Chapman, 1906 C. D. 79, 130 0. G. 3446. 
"Outlet" is not objectionable in all cases as referring to 
something intangible. 

Ljungstrom, 1905 C. D. 541, 119 0. G. 3335. 
The terms of description used in the claims should ac- 
curately describe the construction disclosed in the application. 
The word "keyed" does not accurately describe a washer 
upon, a squared shaft. 

Mueller & Braunsdorf, 1905 C. D. 336, 118 0. G. 5370. 
A party will not be permitted to attempt to distinguish 
claims by the words "substantially as described" since they 
impart no definite limitations into the claims and since it is 
the duty of the Office to require that the limitations intended 
to be included in a claim be clearly and definitely stated 
therein. 

Shepler, 1903 C. D. 17, 103 0. G. 468. 
A hole is an intangible thing and may not be an element 
of a combination. There is no objection to describe the 
element as provided with a hold. 

Davin, 1903 C. D. 351, 100 0. G. 453. 
Under the court decisions the introductory phrase is not 
an element of the combination and does not limit the claim 
to such apparatus. 

easier, 1899 C. D. 5, 90 0. G. 446. 



71 CLAIMS. Rule 37 

If the term binary substance has a fixed meaning in chem- 
istry, indicating a chemical combination of two elements, and 
if it be true that no chemical combination takes place in the 
mixture, the term is objectional, if "binary compound" has 
such meaning "binary substance" will not be objectionable 
because of its similarity to binary compound. 
Du Motay, 1879 C. D. 195, 16 0. G. 499. 

(4) Form of Claim. 

Claims 2 and 3, each of which comprises a reference to the 
preceding claim, with a statement of the structural features 
distinguishing it therefrom. Held to meet the requirements 
of the law, and in this case to clearly point out the invention. 
Brown, 235 0. Gt. 1355. 
The theory of the claim is that the ray of light which 
effects the sensetized paper is a recording medium projected 
against the strip. This is not accurate. The light is no part 
of applicant's record, 'it b'eing only utilized to change the 
material of the strip. 

Fritts, 227 0. G. 737. Illustrative example. 
Of course, as is well known, an applicant for a patent will 
use varying phraseology in his claim in order to obtain as 
comprehensive a patent as possible or and by such use, to 
avoid the pitfalls of language, so that if later one claim is 
inaptly worded, some other claim will stand the test of attack. 
Vacuum Cleaner Co. v. Am. Roty Valve Co., 219 0. G. 
587. 
While the use of the term "for example" is somewhat mis- 
leading, we are of the opinion that the specification is ample 
to establish the fact that the patentee claimed specifically the 
device shown in tlie drawings and specification, i. e., a struc- 
ture erected in the particular manner shown in the drawings, 
even though not described in terms in the specification, thus 
covering the advantages of reduced power and wide rotation. 
Jones V. Evans, 215 F. R. 588. The device was claimed 
generally but was only new as applied to a greenhouse 
window. 
When we say a thing is substantially the same, we mean 
it is the same in all important particulars. It must be of 
the same material, when the material is important; it must 
be of the same thickness, when thickness is important. 
Valoma Marchiony Co. v. Perella, 207 F. R. 379. 
The complainant advances the ingenious argument that the 
defendant's barrel is mounted upon the frame, because the 



Eule 37 CLAIMS. 72 

bolt carrier upon which it is actually mounted, is slidingly 
mounted on the frame. Disapproved. 

Colts' Patent Firearms Mfg. Co. v. New York S. G. Co., 
]90 F. R. 562. 
It is asserted that there is error in the statement that com- 
plainant "is making claims which are broader than the use of 
any particular device, v/hen he attempts to patent as a com- 
bination the use of the wickless burner and any increased 
supply of oil, whether supplied by old device or not." The 
authority referred to. Expanded Metal Co. v. Bradford, 214 
W. S. 366, involved a process patent. The trial judge (168 
F. 712) correctly characterized the claims. 

Central Oil' & Gas Stove Co. v. Silver & Co., 184 F. E. 
457-8. 
We think it may be affirmed as a rule resting upon the 
fundamental principles of patent law that, where the essence 
of the invention is the location, form, size, or any other char- 
acteristic of the means employed,' the 'patentee must distinctly 
specify the peculiarities in which the invention is to be found. 
American Lava Co. v. Steward, 155 F. E. 936; cites 
Germer Stove Co. v. Art Stove Co., 150 F. E. 147; 
Bullock Electric Co. v. General Electric Co., 149 F. 
E. 409. 
This being a comparatively new art, and it not appearing 
that the term "wheel''' as applied to it has obtained a fixed 
and definite meaning, we see no reason why each series of 
units is not entitled to be called a wheel in construing the 
claims of the issue. 

Lindmark v. Hodgkinson, 137 0. G. 228. 
The word "then" introducing a clause in a process claim 
construed. 

Kahn v. Starrells, 131 F. E. 464. 
"A pounder attached to the arm of said lever which pro- 
jects laterally within the tub from its pivotal support." No 
pivotal support is previously recited in the claim. If the 
pivotal support is to be referred to in locating the parts, it 
should be made a positive element of the claim. 
Dodge, 1906 C. D. 439, 125 0. G. 665. 
Patentability of claims can not properly be predicated on 
alleged differences of construction Avhich are not specified 
therein. 

McNeil and Sturtevant, 1906 C. D. 383, 124 0. G. 2177. 
The claims to the mechanism are not proper to define, a 
novel arrangement of the work in connection with such 
meclianism. 

McNeil & Sturtevant, 1906 C. D. 383, 124 0. G. 2177. 



73 CLAIMS. Rule 37 

The claims should distinguish the invention by words and 
not require construction to this end. 

Cutler, 1906 C. D. 347, 123 0. G. 655. 
Claims which purport to cover a process, but which describe 
the operation of an apparatus, the putting together of an 
apparatus, and perhaps the apparatus itself, held objectionable. 
Dixon, 1906 C. D. 343, 133 0. G. 653. 
Where the claim read in the light of the specification of 
one party means one thing and the same claim read in the 
light of the specification of another party means another 
thing, held that the same phraseology should not be employed. 
Podlesak & Podlesak v. Mclnnerney, 1906 C. D. 558, 
130 0. G. 2137. 
A claim for certain printed matter including among other 
features properly set forth "another form" located at a certain 
place with respect to other features is not objectionable as 
being indefinite, the language involving a question as to the 
scope of the claim rather than its form. Examples of func- 
tional claim. 

McClain, 1905 C. D. 519, 119 0. G. 1585. 
The essential feature upon which an invention rests should 
not be left to conjecture and inference. 
B. V. P. P. Wks., 107 P. E. 475. 
Similarities and differences in machines, process or product 
do not depend upon mere names of things, words used to 
describe them, or immaterial matters by which they may be 
distinguished. 

Palmer Co. v. Lozier, 84 P. E. 669. Citing, Glue Co. v. 
Upton, 97 U. S. 3 and Bates v. Coe, 98 IJ. S. 31-43. 
In order to face toward opposite ends of the press, the 
folders must clearly be between those ends. 

Annand v. Spalekhavor, 1901 C. D. 212, 97 0. G. 2083. 
If in a claim one or more articles may constitute a single 
element it is sufficient to mention one only as more than one 
includes one. 

Thorsen, 1893 C. D. 75, 63 0. G. 1688, see also Hulbert, 
1893 C. D. 74, 63 0. G. 1687. 
While an applicant will generally be allowed all possible 
latitude in framing his claims, parenthetical clauses which do 
not contribute to clearness or exactness in stating applicant's 
invention, but which at least are only superfluous, will not 
be allowed. 

Cahill, 1893 C. D. 78, 63 0. G. 1815. 
A claim containing words of limitations which are depend- 



Rule 37 CLAIMS. 74 

ent upon the location or operation of mechanism that forms 
no part of the invention claimed and is neither shown or de- 
scribed, is objectionable. 

Baackes, 1893 C. D. 70, 63 0. G. 9D9. 
An article of manufacture should not as a rule be defined 
in a claim by reference to the process of producing it, but 
when it can not be otherwise defined an exception to the rule 
is presented. 

Painter, 1891 C. D. 200, 57 0. G. 999. 
A product of nature rendered usable by a certain process 
covered bv a process and not by a product claim. 
Latimer, 1889 C. D. 123, 46 0. G. 1638. 
A combination of elements arranged in a certain position 
as to each other, which certain position is fixed and restricted 
by the terms of the specification and claim, is a proper claim. 
Eernolds, 1876 C. D. 88, 9 0. G. 744. 
Every claim must be so drawn as to plainly indicate what 
kind of invention is sought to be covered, whether an im- 
provement in an art or in a manufacture, whether a process or 
product. A claim for the use of a thing is ambiguous. 

Mayall, 1873 C. D. 134, 4 0. G. 210; Brownlie, 1872 C. 
D. 208, 3 0. G. 212; Hooper, 1872 C. D. 150, 2 0. 
G. 4, 1872. 
A claim for a result or effect is bad. The whole genus of 
claims in the nresent participle form are bad. 

Simonds, ^1870 C. D. 23 ; Arkell, 1871 C. D. 263 ; Beavis, 
1879 C. D. 331, 16 0. G. 1233; Hobson, 1872 C. D. 
20, 1 0. G. 141. 
Every claim must be. so drawn as to plainly indicate what 
kind of invention is sought to be covered, whether an im- 
provement in an art or in a manufacture, whether a process 
or product. 

A claim for the use of a thing is ambiguous. 

Mayall, 1873 C. D. 134; Brownlee, 1872 C. D. 208; 
Hooper, 1872 C. D. 150. 
Each claim must be to a complete and operative combina- 
tion in the direction of the invention. 
Holt, 1884 C. D. 43, 29 0. G. 171. 
A claim for an "arrangement" disapproved a claim for a 
combination is better. 

Eynon, 1871 C. D. 239; see Martz, 1870 C. D. 16. 

(5) Construction of Claim. 

See "Construction of Issue" under Eule 95. 

The patent of Hug 1154314, granted September 21, 1915, 



75 CLAIMS. Rule 37 

has as its first claim simply the one word "polihydro- 
colchicin.'^ This claim is proper notwithstanding it leaves 
the reader without any knowledge of the invention patented 
unless he has read the specification and is able to bear it in 
mind. 

Assistant Com. Clay in ex parte BrOwn, 235 0. G. 1355. 

A claim may be limited beyond its terms by reference to 
the specification. A very good case with authorities, Fowler 
& Wolfe Mfg. Co. V. McCrum Howell Co., 215 P. 905. Com. 
Ewing cites this case as holding — If an infringer's use includes 
a specific feature which is essential to patentable novelty and 
is not recited in the claim, the defect is sometimes cured by 
construction. 

See Feud v. Miggett, 223 0. G. 649. 

A claim should be given the broadest interpretation Its 
terms will permit. Miland, 135 0. G. 1123; Pratt v. De 
Ferranti and Hamilton, 148 0. G. 568. Nevertheless it can 
not be enlarged beyond the plain import thereof as set forth in 
the specification on which the claim is based. Sinclair v. 
Engel, 147 0. G. 769. 

It is in the specification of a patent that the invention, if 
there be one, must be discovered. Eeferences to prior art are 
useful to clear up obscurities (Hall Borchert, etc., Co. v. Ella- 
man, etc., Co., 213 P. E. 341).. 

Barrett Company & Schulte v. Ewing, Com., 228 0. G. 
761. 

But, even if P's apparatus shows the continuous application 
of the received energy, he is not for that reason entitled to 
claim an unbroken current under this patent. P's conception 
was no broader than the essential elements of his idea of 
means, and this was not broadly current operation, but spe- 
cifically current operation on the galvanometer principle. 
(Quoted from 198 P. 386.) 
Fritts, 227 0. G. 741. 

Since he made this general suggestion as to supporting the 
candy, and since he was a pioneer in providing the "figured" 
motion, a meritorious improvement in the art, infringement 
of his patent might be found. 

Hilbreth v. Auerbach, 223 P. E. 651. 

The only feature of the claim for which there can be any 
color of novelty is in raising the center sills above the bolsters 
into the floor stringer space. But even this feature is antici- 
pated in 615, 118. 

Guaranty Trust Co. v. Beltendorf Axle Co., 223 P. E. 
542. 



Eule 37 CLAIMS. 76 

When the language of a claim is clear and distinct the 
patentee is bound by it. If elements are omitted there is no 
infringement. 

Evans v. Hall Printing Press Co., 223 F. E. 539. 
Therefore claim 23 may be disregarded at once ; because 
where so many claims are put into a patent each element in 
a given claim must be supposed to be especially necessary to 
the combination. 

Victor T. M. Co. v. T. A. Edison, 221 0. G. 351. 
Construction of claims in view of the previous art. 

Victor Talking Machine Co. v. Thomas A. Edison, In- 
corporated, 221 0. G. 357. 
While the ultimate disposition of the case must depend 
upon the construction of the claim in respect to an express 
limitation found therein, this in turn depends in part upon 
the advance which Eowley made over existing knowledge ; and 
the inquiry may well be approached along the road adopted in 
217 P. 775. This is to inquire: First, what was E's real 
advanced step or new concept? Second, is defendant's struc- 
ture within the limits of such advance? And, third, if so, do 
the terms of the claim, when fairly read, require such an 
interpretation as to sanction defendant's appropriation of 
Eowley's idea. 

Dennison J. Eowley Co. v. Columbus, etc., 220 Fed. E. 
128. 
The prior art contains nothing which should require it to 
be narrowly construed. 

Autopiano Co. v. American Player Action Co., 217 0. 

G. 1055. 

Claims so functional in character and form as those in suit 

must be read in the light of the drawings and description of 

the patent and be closely limited to what is there shown and 

described. 

Union Special Mach. Co. v. Singer Mfg. Co., 215 F. E. 
598-602. 
The court will .remember that the specification and claims 
are often unskillfully drawn and that the claim shall be con- 
strued, if possible, to sustain the patentee's right to all that 
he has invented. 

Benjamin Memo Card Co. v. Eand, M'Nally & Co., 210 

P. E. 287. 

A patent claim is a formal instrument, and its meaning 

depends upon its words and not on the mind of the inventor. 

National Elec. S. Co. v. Telefunken Wireless T. Co., 209 

F. E. 865. 



77 CLAIMS. Rule 37 

Where a patent contains both a broad and a narrow claim 
and a suit is brought on the broad claim, we can not construe 
into it a limitation not therein expressed, but which is ex- 
pressed in the narrower claim and by which alone one is 
distinguished from the other. 

^Tational Tube Co. v. Mark, 209 0. G. 335-6. 

It is only applying to a patent the ordinary rules of con- 
struction applied to other grants, to say that, in determining 
whether a given element should be considered as present with 
a limiting effect in a claim in that respect ambiguous, we 
should observe the occasion or the necessity for its introduc- 
tion by the claim draftsman. If its presence was necessary 
to distinguish the claim in point of patentability from the 
prior art or in point of effect from the other claims, it should 
be implied, but if it can be of no use in either of these par- 
ticulars, it should not operate as a limitation. 

Scaife & Sons Co. v. Falls City Woolen Mills, 209 F. 

E. 216. 

In practice, however, the claim elements often can not be 
effectively labeled "generic" or "specific;" terms are used 
capable of either construction; and here is the interpretative 
usefulness of claim differentiation. 

Scaife Sons Co. v. Falls City Woolen Mills, 209 F. E. 
214. 

The defendant claims that the language in the claim said 
"indented mold" restricts it to a particular form which it does 
not use. 

The defendants' variation does not effect the functional 
action, and therefore is not an avoidance of the claim. 
Valoma Marchiony Co. v. Marchiony, 207 F. E. 383. 

Unless a patentee has especially limited himself to a spe- 
cific form of construction, or such limitation is imposed by 
the state of the prior art, or such limitation was imposed by 
the action of the Patent Office in rejecting a broad claim, 
applicant is entitled to a broad construction of his claims in 
accordance with the language thereof. 
Eyder v. Lacey, 200 Fed. Eep. 971. 

The claim of a patent is a statutory requirement prescribed 
for the very purpose of making the patentee define precisely 
what his invention is, and it is unjust to the public, as well 
as an invasion of the law, to construe it in a manner different 
from the plain import of its terms. 

Loraine Development Co. v. General Electric Co., 198 

F. E. 115. 

If even common words have a special, extended, or restricted 



Eule 37 CLAIMS. 78 

meaning when used in that art, courts are bound to give them 
that meaning. 

Loraine Development Co. v. General Electric Co., 198 

P. E. 115. 

There are such fundamental difference between the two 

inventions by which the battery plates are produced that a 

broad construction of claim .2, such as its literal wording 

would seem to imply, should not be accorded to it. 

Electric Storage Battery Co. v, Gould Storage Battery 
Co., 197 Fed. E. 749. 
Where the language of a claim is plain in its meaning, 
when read in connection with the subject matter, and when 
so read describes a valid, patentable combination, it should 
not be interpreted according to other possible meanings of 
the terms used, by which not only would the claim be ren- 
dered invalid, but by which other patentable combinations 
would be made apparent infringements and would then in 
turn have to be relieved from the consequences of such in- 
fringement by a return to the conclusion that the construction 
of the claim rendered it invalid. 

Hall V. Frank, 195 Fed. E. 951-952. 
Elements in claims should be read with reference both to 
the structure and the function given in the description of 
invention. 

Lowden Machinery Co. v. Strickler, 195 Fed. E. 756. 
Whether or not there is any force to these criticisms of the 
specifications and claims (misleading, confusing, multifarious 
claims) can be determined only when the court is advised as 
to the state of the art when the patent was granted. 

Marconi Wireless Tel. Co. v. New England N"at. Co., 191 
F. E. 194. 
Wording of claim just the reverse of that intended. 

Crown Cork & Seal Co. v. Brooklyn Bottle Stopper Co., 
190 F. E. .327. 
It is frequently the case when a patentee attempts ex 'post 
facto a physical explanation of what he has found by experi- 
ment, a collateral issue is raised which diverts attention from 
what is more important — the means whereby he effects his 
result. 

Combustion Utilities Corp. v. Worcester Gaslight Co., 190 

F. E. 161. 

It is urged that the decision of the Court of Appeals in 

Tyden v. Ohio Table Co., 152 F. E. 183, holds that a claim 

generally to "means" is functional and invalid. I do not so 

understand Judge Lurton's opinion. In that case the means 



79 CLAIMS. Eule 37 

shown were so ordinary and common, and the device so lack- 
ing in invention, except possibly in the result or function 
disclosed, as to compel the conclusion that the patentee in- 
tended to claim the result by whatever means accomplished. 
Mershon & Co. v. Bay^City Box & Lumber Co., 189 F. 
E. 749. 
But applicant has specified a large number of substances 
containing the common quality which fits them for use in his 
invention, in the absence of evidence to the contrary, we 
believe that the doubt should be resolved in his favor. 
Ellis, 167 0. G. 983. 
The entire structure of the claim comprehends new ele- 
ments applied to a structure of an old type. If in this claim 
the inventor, by including the words "retorts therein" has 
limited himself to a claim for his invention when applied to 
use in a structure of special type, it would be a harsh and 
unusual construction of his claim to say that, because he had 
unnecessarily limited himself to the use of his invention for 
the purpose of heating retorts, he should lose it altogether. 
Combustion Utilities Corporation v. Werceslor Gaslight 
Co., 190 F. E. 161. Also what follows above quotation. 
See Langan v. Warren Axe & Tool Co., 166 0. G. 
986-987. 
To single out as the actual and dominant factor in main- 
taining a low temperature the heat absorbtion which results 
from CO introduced in the draft current seems to give a 
fallacious emphasis to a part of what occurs above the grate. 
Combustion Utilities Corp. v. Worcester Gaslight Co., 
190 F. E. 160. 
The invention stands as it was asserted and accepted at the 
close of the proceedings regardless of what had passed pre- 
viously. Said in a case where claims had been withd*rawn and 
again reasserted. 

Dodge >Teedle Co. v. Jones, 153 F. E. 190. 
It is well settled that where a party copies the claim of a 
patent for the purpose of interference, such claim must be 
read in the light of the disclosure of the patent. 

Chirney v. Clause, 116 0. G. 597; Brown v. Hill, 133 0. 
G. 1284; Sobey v. Holsclaw, 126 0. G. 304; Sinclair 
v. Engel, 147 0. G. 769. . 
Claims are to be constructed by the specification as amended. 

Weuberth v. Lizotte, 141 0. G. 1102. 
A claim will be given the broadest interpretation of which 
its terms are capable. 

Milans. 135 0. G. 1122. 



Rule 37 CLAIMS. 80 

As to interpretation of claims. 

Leonard v, Horton, 189 0. G. 781 ; Jund v. Harrington, 
131 0. G. 691. 
A claim should be given the broadest interpretation which 
it will support, and limitations should not be imported into 
the claim from the specification to meet the exigencies of the 
particular situation in which the claim may stand at a given 
time. 

Miel V. Young, 128 0. G. 2532. 
The function is not inherent in the mechanism shown for 
the reason that the function does not flow from the mechanism 
as shown and described, but from that mechanism minus one 
of its parts. 

Scott V. Southgate, 125 0. G. 1203. 
There is not a word in the claims limiting them to a cur- 
rent double the old capacity and we are unable to perceive 
any reason why the claims should be eviscerated by import- 
ing into them the statements of a formula intended only as 
an illustration. 

Electric Smelting & Aluminum Co. v. Pittsburg Reduc- 
tion Co., 125 F. E. 926-938. 
Reference may be had to the French patent for the pur- 
pose of discovering the scope of the patent in suit. 

Central Lighting Co. v. Northern Light Co., 137 F. R. 
427. 
A device not within the wording of the claim, but within 
its spirit held to infringe. See also Schoeder v. Brammer, 98 
F. R. 880 and 106 F. R. 918. 

Benbow-Brammer Mfg. Co. v. Simpson Mfg. Co., 132 F. 

R. 3i5. 

ISFo better method of construing claims is perceived than to 

give them in each case the broadest interpretation which they 

will support without straining the language in which they 

are couched. 

Podlesak & Podlesak v. Mclnnerney, 1906 C. D. 265, 123 

0. G. 1989. 

In reading a claim to construe it heed must not only be 

paid to the specification proper, and to the drawings, but also 

to the other claims of the patent. (Ryder v. Schlichter, 126 

P. R. 487.) 

Andrews v. Wilson, 1906 C. D. 717, 123 0. G. 1667. 
Whether two patents having claims with the same wording 
ought ever to issue. 

Allfree v. Sarver, 1906 C. D. 214, 122 0. G. 2391. 
The meaning given to the counts of an interference is that 



81 CLAIMS. Rule 37 

of the party first making tlie claim. (Tracy v. Leslie, 14 
App. D. C. "^126; Puete v. Elwell, 15 App. D. C. 31.) 

Podlesak & Podlesak v. Mclnnerney, 1906 C. D. 558, 120 
0. G. 2127. 
In a case of doubt the intent of the applicant in using a 
term in a claim and the understanding of the Office in allow- 
ing the claim have a material bearing upon its meaning and 
scope, and therefore the applicant should not be required to 
cancel statements where such cancellation may result in a 
more limited construction of the claim than is necessary. 
Jansson, 1906 C. D. 62, 120 0. G. 2126. 
All the words of a claim will be given force and effect when 
this can be done without contradiction or inconsistency. 
Eeese, 1904 C. D. 484, 113 0. G. 849. 
A limitation that a fuse is "within the casing" means any- 
where within the casing as imbedded in its walls. . In the 
absence of express words, it should not be limited to a fuse 
within the cavity of the casing. 

A fuse covered by the outer wrapper of a casing is within 
the issue and is reduction to practice. 

Sachs V. Ilundhausen, 1903 C. D. 625, 105 0. G. 1534 
et seq. 
Nothing beyond this was described in the patent as a 
function of the invention, and nothing more can now be 
successfully maintained. 

Consolidated Car Heating Co. v. An Elec. H. Corp., 
82 F. B. 995. 
He must, indeed, make such disclosure and description of 
his invention that it may be put into practice. In this he 
must be clear. It is no concern of the world whether the 
principle upon which the new construction acts be obvious or 
obscure, so that it inheres in the new construction. 

Diamond Eubber Co. v. Consolidated Rubber Tire Co,, 
31 Supreme Court Reporter 448. 
Words are to be explained by their context. 

0. Greenough v. Drummond, 1879 C. D. 213; Greenough 
V. Drummond, 1879 C. D. 269, rehearing. 

(6) Reference to the Specification. 

It is clear that neither the language employed nor the state 
of the art requires this limitation, and that its presence is 
almost necessarily negatived by comparison with claim 4, 
which is differentiated alone by the inclusion of this feature. 
Knoley Co. v. Columbus Co., 220 Fed. R. 133. 

The claims are a part of the description required by the 
statute, and in them, and in that part of the description 



Eule 37 CLAIMS. 82 

which is now commonly called "specification," is the proper 
place in which to define the breadth of the invention. 
National Tube Co. v. Marks, 216 Fed. E. 507. 
General language in a claim which points to an element or 
device more fully described in the specification is limited to 
such an element as is there described. 

Attumwa Box Car Loader Co. v. Christy Box Car Loader 
Co., 209 0. G. 688. 
The construction of the third claim of the patent is made 
the more evident, when the language of this claim is con- 
trasted with that of the first claim of the D'Arcy patent, 
which, although itself not directly involved under this appeal, 
may, under the general rule that a patent as any other writ- 
ten instrument, is to be construed as a whole and due effect 
given to all its parts, be looked to for the purpose of aiding 
in the proper construction of the third claim. (53 F. 367. 
370, 108 F. 379, 383, 123 F. 416-419.) 

Sheffield Car Co. v. D'Arcy, 194 F. E. 690. 
A claim of a patent depending for its validity upon a fea- 
ture not disclosed by specification or drawing is invalid. 
Herman v. Youngstown Car Mfg. Co., 191 F. E. 579. 
Each claim of the process patent is expressly limited by the 
expression "the herein before-described process" and when 
read in connection with the specification is intelligible though 
claims 10 and 13 of the process patent are not clearly ex- 
pressed. 

Combustion Utilities Corp. v. Worcester Gaslight Co., 190 
0. G. 164. 
In a large sense every operation by electricity is by cur- 
rent: but the patentee does not leave us to this general use 
of the word "current." He does not leave us in any doubts 
as to what he means by "current-operated." He makes his 
meaning clear in the specification, wherein he clearly draws 
the distinction between the coherer, the imperfect electrical 
contact of the previous art, and his method of operating by a 
constantlv flowing current. 

IsTational Electric S. Co. v. United Wireless Tel. Co., 189 
F. E. 733. 
Whether a claim is valid the advantages of the device defined 
not being pointed out in the specification. 

Morgan Engineering Co. v. Alliance Machine Co., 157 
0. G. 1244-1246. 
If the crane can not be constructed without securing such 
advantage, this is alone sufficient. 

Cases cited, 72 F. E. 67-73 to 75, 115 F. E. 886-895, 117 
F.. E. 410-415. 



83 CLAIMS. Rule 37 

It is possible that in Forster's device the water, to some 
extent, impinges upon the inside of the "tubular body" though 
he does not suggest it. But he would be entitled to claim 
that feature, if it in fact existed. (Goshen S., 73 F. E. 67,- 
116 F. E. 363, 117 F. E. 410-415, 123 F. E. 67-71. Indeed, 
the Supreme Court has decided that novelty is negatived by 
a prior patent which shows the device in its drawings and de- 
scribes it in the specifications, but does not clearly state its 
use. Walker's Patents, sec. 55.) 

Forest Citv Foundry & Mfg. Co. v. Barnard, 157 0. G. 
756. 

In the construction of a patent, the omission of the pat- 
entee to point out or refer in his specification or claims to a 
special feature, which he subsequently maintains is the most 
important part of his invention is very significant, and should 
be carefully scrutinized. 

Stirling Co. v. Eust Boiler Co., 144 F. E. 849. 

Limitation by description. 

Continental Paper Bag Co. v. Eastern Paper Bag Co., 
136 0. G. 1297. 

In other words reference may be made to the specification 
to explain but not to extend or limit the claims. The words 
"to operate substantially as described" mean "substantially as 
described in regard to the combination which is the subject of 
the claim. 

General Electric Co. v. International Specialty Co., 126 
F. E. 759. 

It is, no doubt, true that an element not stated in a claim 
can not be brought forward from the specification and im- 
ported into it. McCarty v. Eailway, 160 W. S. 110-16, Sep. 
Ct. 240, 40 L. Ed. 358. But that is by no means to say that 
the specification which precede do not limit it, or that they 
are not to be resorted to, as they always are, to explain it and 
give it character. 

National Meter Co. v. Neptune Meter Co., 122 F. E. 75. 

The claim of a patent must always be explained by and read 
in connection with the specification and as this claim clearly 
includes metal taken from the blast-furnaces, the question 
whether it includes every molten metal is as much eliminated 
from our consideration in this case as if it were sought to 
show that the word "metal" might include other metals than 
iron. 

Podlesak & Podlesak v. Mclnnerney, 1906 C. D. 558, 130 
0. G. 3137. 



Rule 37 CLAIMS. , 84 

The specification may be referred to for ascertaining the 
meaning of the claims. 

Hollev V. Yergennes Machine Co., 1880 C. D. 659, 18 
0. G. 1177; Jansson, 1905 C. D. 62, 120 0. G. 2126. 

Features described as preferable in the specification do not 
constitute a limitation of the claim. 

Krajewski v. Pharr, 105 Fed. Eep. 518. 

The point is made that in the original application for a 
patent, filed in May, 1882, the defendant in error designated 
his invention a mechanism to form a "noiseless, self-adjusting 
treadle," and that he made no allusion to the feature thereof 
which is now deemed of prime importance until his specifica- 
tion was subsequently so amended by his attorneys as to con- 
tain the declaration that his invention had for one of its 
objects to provide means "to keep the treadle bearing in line 
and at a fiied distance apart to avoid friction." It is argued 
from this circumstance that the court must hold the invention 
of the defendant in error to be a mechanism to secure a noise- 
less, self-adjusting treadle and nothing more. We are unable 
to assent to the doctrine that an inventor is thus circumscribed 
by the words which he may first use to describe the advantages 
of his invention and that he may not afterward, on further 
consideration, either upon his own suggestion or that of his 
counsel, amend his specification so as to assert and maintain 
all the advantages which his device possesses. 

The claim throughout was substantially the same. 
Singer Mfg. Co. v. Cramer, 97 0. G. 555. 

It is earnestly contended that inasmuch as the claim of 
the Cramer patent calls for a "treadle provided with trim- 
mers," the trimmers are made an essential feature of the 
construction of the treadle and that there can be no infringe- 
ment by the use of a treadle which has no trimmers. We do 
not think, however, that the court should have taken the case 
from the jury upon that ground. 

If the patentee was entitled to the doctrine of mechanical 
equivalents, his right certainly is not affected or diminished 
by the use of the words "provided with trimmers" as found 
in his claim. 

Singer Mfg. Co. v. Cramer, 1901 C. D. 492, 97 0. G. 552. 

The particular expressions used in the claims are not clear 
as they have not been defined and explained in the specifica- 
tions. 

To merely state in the claim the function or result without 
first including therein the structure by means of which the 



85 CLAIMS. Rule 37 

function or result is obtained renders a claim vague and in- 
definite. 

Ivotler, 1901 C. D. 12, 95 0. G. 2684. 
If any particular kind of gripping device was specified it 
might, to that extent, perhaps, be saved; but as it depends 
upon the general combination of the elements brought to- 
gether, it is of no novelty. 

Thompson Scenic Ev. Co. v. Chestnut Hill Casino Co., 
119 F. E. 362. 
Where expressions used in the claims have not been specially 
defined or explained in the specification so that their meaning 
can be understood. Held that the claims are objectionable as 
not being so clear and concise as required in the statutes and 
rules. 

Kotler, 1901 C. D. 62, 95 0. G. 2684. 
Where the claims of a patent are not supported by a de- 
scrijDtion in the patent, such claims are of no validity. 
Pacific Cable Co. v. Buette City E. E., 94 0. G." 205. 
Where claims in a patent are not supported by a descrip- 
tion in the patent such claims are of no validity. 

Pacific Cable Eailway Co. v. Butte City Street E. E. 
Co., 1894 C. D. 205, 66 0. G. 1758. 
Claim and operative method must correspond. 

Barney, 1890 C. D. 171, 53 0. G. 1569. 
It is the province of claims to relegate to the specifi.cation 
the enumeration of such details of construction as shall be 
found upon examination to be immaterial to the true scope 
of the actual invention. 

Laskey, 1889 C. D. 181, 48 0. G. 539. 
On referring to the specification we find it there expressly 
declared that the invention consists "in the construction and 
combination of parts hereinafter fully described and claimed, 
reference being had to the accompanying drawing." 

This seems to have been construed as limiting the claims. 

Singer Mfg. Co. v. Cramer, 24 S. C. E. 299. 
Claim — "The hereinbefore described compound, or composi- 
tion of matter, consisting of the ingredients mentioned, pre- 
pared in the manner and proportion substantially as described, 
for the purposes set forth." 

This is clearly improper, and distijiguishable from the case 
of Tweddle, 1876 C. D. 221. The ingredients are well known 
and should be specified in the claim. A general reference to 
the specification is nOt specifically pointing out the invention 
claimed. 

Williams, 1876 C. D. 227, 10 0. G. 748. 



Rule 37 CLAIMS. 86 

A mere reference to the specification by the terms "Sub- 
stantially in the manner described" is not "particularly" point- 
ing out and "distinctly" claiming the alleged invention. 

Eice, 5 0. G. 552 ; Shepler, 1903 C. D. 17, 103 0. G. 468 ; 
Williams, 1876 C. D. 227, 10 0. G. 748. 
The claim "the combination of the window sash and the 
rubber strips arranged as described" is not ambiguous and is 
unobjectionable. 

Mclntire, 1876 C. D. 34, 9 0. G. 300. 
Claim "As a new article of manufacture, the, petroleum 
product hereinbefore specified, and having the characteristics 
described." 

This claim is proper because this is one of those anamalous 
cases in which the nature of the product described does not 
admit of a more distinct mention in the claim without repeat- 
ing therein the greater part of the specification. Opinion of 
General Chemical Examiner. 

Tweddle, 1876 C. D. 221, citing 2 Wallace Jr. 365 ; Moule 
& Bannehr, 1871 C. D. 87; Arkell, 1871 C. D. 263; 
Shepler, 1902 C. D. 17, 102 0. G. 468. 
A claim for a rake "to gather" or "discharge" the grain 
construed to be for a rake that would do both in view of the 
specification which describes such a rake. 
Dorsey, 1870 C. D. 17. 
It should be remembered that the question is not now be- 
fore the Office how the specification should be drawn. In 
that case it might properly be . required that all ambiguity 
should be eliminated. 

Dorsey, 1870 C. D. 17. 
The practice of allowing claims for inventions which can 
only be distinguished from those previously invented, or pat- 
ented by the construction given to such words as "substantially 
as described," "as herein set forth," etc., can not be too 
strongly condemned. They are, at best, ambiguous and dan- 
geroiis phrases and however else they may be used, they must 
not be employed in the granting of letters patent to make a 
claim good that without them would be bad and unpatentable. 
Eubens & Co., 1869 C. D. 104; Waterman, 1870 C. D. 
107; Moule & Bannehr, 1871 0. D. 87. 

(7) Generic and Specific. 

Suppose that elements A, B, and C are each old in several 
specific forms, but are operative only in the combination A. 
B, C. An inventor perfects new and useful specific forms of 



87 CLAIMS. Rule 37 

each a, h, c. The most desirable form of his invention is the 
combination a, h, c, and this the inventor considers his per- 
fect Avork ; but he may use and is entitled to monopolize one 
or two of the old forms in combination with two or one of 
his new forms. He may have, and the proper drafting of his 
patent will secure for him, a series of combination claims 
like this (capitals representing generic, lower case, his new 
specific forms): (1) a, h, c; (2) .a, h, C; (3) a, B, c; (4) 
ft, B, C; (5) A, &. c; (6) A, B, c; (7) A, h, C. 

Scaife & Sons Co. v. Falls City Woolen Mills, 209 F. 
E. 214. 

The same invention may be generic to the individuals of its 
own genus, and specific in its relation to some wider invention 
representing the group to which itself belongs. 

Sec. 535, Eobinson on Patents, Vol. 2, p. 151. 

The same invention may be generic to the individual of its 
genus, and specific in relation to some wider invention repre- 
senting the group to which it belongs. 

Eosell V. Allen, 1900 C. D. 333, 92 0. G. 1036. 

It is a familiar rule that a generalization or a definition 
that is too broad can not be made good by making an arbi- 
trary exception of each case that comes within its terms, but 
should not have been included. A single contrary example 
destroys the generalization. (jSToted from Bell Tel. case.) 

A generalization so broad as to cover the prior art must 
be withdrawn, and a new one made that is narrower and is 
limited bv the point of difference. 

United Wireless Tel. Co. v. National E. S. Co., 198 Fed. 
E. 396. 

Where a composition was claimed enumerating a number of 
constituents, and a large number of equivalents coming under 
one generic chemical class were mentioned, a generic term 
might be employed including all such equivalents. In re 
Ellis. 167 0. G. 981. Where only one was mentioned and 
there was no evidence that the invention was broader the gen- 
eric term was inadmissible. 

Dosselman & Neymann, 167 0. G. 983. See 159 IT. S. 
465 and 78 F.' 910. 

Of course, the more logical way would have been to include 
the genus and its various species in a single patent, avoiding 
thus what seems to be an unnecessary multiplication of pat- 
ents. But the rules of the Patent Office do not allow of any 
such simplification permitting in a single application only a 
generic and one specific claim. It would be a failure of justice 
if a meritorious invention should be deprived of the fruits of 



Kule 37 CLAIMS. 88 

111!? labors boeniiso an arbitrary riile of the Patent Otfiee has 
brought about eoiuplieations not contemplated if authority can 
be found for seeuriiis: it to him. Such authority is not want- 
ing in this circuit. ^53 F. 137; 71 F. 390; 83 F. 461.) 

Badische Anil in &^ Soda Fabrik v. A. Klepstein & Co., 
135 0. G. 554. 
Where a set of claims can be based upon one specific prod- 
uct, there is no reason wliy they should not be permitted to 
remain in the same application. Chemical claims. CTOod 
example of a generic, sub-generic and specified claims. 
Gassmann^ 1900 C. D.^ 30, 90 0. Q. 959. 
Doubted if the doctrine of genus and species as affecting 
articles of manufacture can properly be applied to combina- 
tions and sub-combinations growing out of the general struc- 
ture. 

Freese, 1880 C. T). 133, 17 0. G. 1095. 
A genus is defined at '"A precisely defined and exactly 
divided class'' and as '*An assemblage of species possessing 
in certain characters in common."' 

Kent, 1880 C. D. 115, 17 0. G. 680. 
In a claim for a genus the characteristics common to the 
species of that irenus must be pointed out. 
Kent, 1880'C. D. 115, 17 0. G. 686. 
"When the different forms are such that the substitution of 
one for the other involves invention, the difterences are pat- 
entable, and the several forms constitute ditferent species of 
the genus. When the substitution of one for the other in- 
volves no invention, but only mechanical skill, the dilferences 
are not patentable, and the forms are all modifications of a 
siuij-le species. 

' Kook, 1879 C. D. 303, 16 0. G. 543; Cowper, 1879 C. 
D. 194, 16 0. G. 499; Morrison, 1879 C. D. 169. 16 
0. G. 359. 
A generic claim and one specific claim may be had in one 
application, but no more than one specific claim. 

Cowper, 1879 C. D. 194, 16 0. G. 499; Morrison, 1879 

C. J). 169. 16 0. G. 359; Heaton, 1879 C. D. 95. 15 

0. G. 1054; Smith, 1879 C. D. 137; Eado, 1870 C. 

r>. 137. 

A so-called mechanical process — that is to say a process 

which depends upon some mechanism in the practice of it — 

must amount to a new way of using an old machine, to be 

patentable. 

Dailey, 1878 C. D. 3, 13 0. G. 338. 
In addition to a generic claim, one who has invented the 



89 CLAIMS. Rule 37 

genus way, under the established practice of the Office, claim 

one particular species illustrative, or typical, of the genus. 

Kent, 1880 C. D. 115, 17 0. G. 686; Walsh v. Shinn, 

1879 C. D. 279, 16 0. G. 1006; Cowper, 1879 C. D. 

194, 16 0. G. 499; Ewart, 1880 C. D. 78, 9 0. G. 1038. 

A generic claim and one specific claim may be had in one 

application, but no more than one specific claim. 

Smith, 1879 C. D. 216, 16 0. G. 630; Eagle, 1870 C. D. 
137; Cowper, 1879 C. D. 194, 16 0. G. 499: Morri- 
son, 1879 C. D. 169, 16 0. G. 359; Heaton, 1879 C. 
D. 95, 15 0. G. 1054. 
A specific claim is a bar to the grant of a generic claim 
for the same subject matter in a subsequent patent. 

Atwood, 1869 C. D. 98; Lowe, 1870 C. D. 39; Hyde, 
1871 C. D. 109; Holt, 1884 C. D. 43, 29 0. G. 177. 

(8) Combination. 

Invention of a combination does not lie in gathering up the 
elements that are employed, but consists in first perceiving 
that a new and desirable result might be attained by bring- 
ing about a relationship of elements which no one has before 
perceived and then going forth to find the things that may 
be utilized in the new required relationship. 

Eailroad Supply Co. v. Hart Steel Co., 217 0. G. 704. 
We are not impressed with applicant's claims of aggrega- 
tion as applied to claims 14 and 17; in our judgment tlie 
parts co-operate to produce an improved furnace and are there- 
fore properly treated as a combination. 

Masonic Fraternity Temple Ass'n v. Murphy Iron Works, 
215 F. H. 590-594. 
The record satisfies us that the combination in the exact 
form described in the patent would throw the coal to. the ends 
of the cars, was practical and useful, and that the utility and 
success of the commercial combination is attributable to C's 
discovery or invention of the mode of operation and combina- 
tion, and not to the slight change in form of the top of his 
carrier to which he was not limited by his specification or 
claims. 

Ottumwa Box Car Loader Co. v. Christy Box Car Loader 
Co., 209 0. G. 683. 
Obviously if the new element coacts with the other elements 
in a different manner from the corresponding elements of the 
old combination, and a new result is obtained thereby, a new 
and patentable combination may be made. 
Mumford. 206 0. G. 878. 



Rule 37 CLAIMS. 90 

The word is used in two senses, one involving a considera- 
tion of the previous art (cases) another ("which in the inter- 
est of accurate terminology, might well be taken as the ex- 
clusive sense") aggregation means that the claims, in and of 
themselves, independently of the prior art, show the elements 
are incapable of coacting to produce a unitary result. 

Krell Auto Grand Piano Co., etc., v. Story & Clark Co., 
206 0. G. 313. 
An aggregation (independent of the Act) is proper where 
there is no direct coaction between the elements, and where 
the only coaction comes through the mediation of the operator 
(or what seems to us the same, the mediation of the thing 
or material operated upon). 

Krell Auto Grand Piano Co., etc., v. Story & Clark Co., 
206 0. G. 313. 
The color is non-functional. 

Coca Cola Co. v. Goy Ala Co., 200 F. E. 724. 
Tv/o of the elements seem to have been merged into one, 
with an omission of the function upon which patentability 
depended. No infringement. 

Star Bucket Paint Co. v. Butler Mfg. Co., 198 Fed. E. 
857. 
No new or novel means for niaking paper are claimed. The 
old means are employed; but the arrangement of these means 
while paper making is going on is different, not with relation 
to each other, but with relation to the "stock" discharged on 
the screen, and then the speed of the screen with relation to 
the speed of flow of the stock is regulated. 

Eibel Process Co. v. Eemington Martin Co., 197 F. E. 
762. 
It must be conceded that in the last analysis the patent 
does not do much more than move signals from one place to 
another without changing their function, but in doing this 
a real contribution has been made to the art, and a contribu- 
tion I think of considerable value, each part has been made 
more effective to accomplish the common object, and in which 
the increased efficiency is due to the new relation. Proper 
combination. 

Burdett-Eowntree Mfg. Co. v. Standard Plunger Ele- 
vator Co., 196 F. E. 43. 
It is true that the two devices do not act simultaneously, 
but they co-operate with respect to the work to be done, and 
in furtherance of it. 

Westinghouse Electric & Mfg. Co. v. Condit E. Mfg. Co., 
194 F. E. 438. 



91 CLAIMS. Rule 37 

Claims 3, 4 and 5 are also void, because they cover only 
aggregations of machines operating successively and inde- 
pendently, and do not embody patentable combinations. 
Loggiet Puget Sound Mills, 194 F. E. 164. 
Apparently conceded that the material acted upon could not 
be an element of a combination. 

Union Paper Bag Mach. Co. v. Advance Bag Co., 194 
F. E. 139. 
It was finally held on appeal that, as an apparatus for stor- 
ing and distributing acetylene gas, the solvent, with super- 
saturated solution of acetylene, might constitute an element 
of the combination, and a claim was suggested by the board, 
which is claim of the patent in suit. 

Acme Acetylene Appliance Co. v. Commercial Acetylene 
Co., 192 F. E. 321. 
S's device was novel and patentable, for while the desirabil- 
ity of insulating the inside of a socket was recognized, while 
the use of insulating material retained in place by its yielding 
nature in other portions of a socket was common, and while 
it was known in the bottle-stopping art that a yielding lining 
material could be sprung into the interior of a stopper and 
there retained, yet the existence of these elements in severalty 
suggested to no one their combined use to fill a recognized 
want in electric lighting. 

Freeman Electric Co. v. General Electric Co., 191 F. E. 
168-169. 
The fact that there is novelty in one of the elements, as 
in the present case in the change in the plane of the nozzle 
pivot, does not justify a claim to the combination of the ele- 
ments, unless there is coaction between them to produce a new 
result 

Pelton Water Wheel Co. v. Doble, 190 F. E. 765. 
It is generally sufficient if there be such coaction that a 
result is produced which is new, and the result is new and 
substantially a better result than has been accomplished by 
other combinations. (Loom Co. v. Higgins, 105 W. S. 580.) 
Pelton Water Wheel Co. v. Doble, 190 F. E. 760. 
The inventive act in a combination patent is the making 
of the component parts, capable of combination, and fit to be 
united to constitute the combination. The physical putting 
together of the two parts is no part of the invention. 
Kreplik v. Couch Patents Co., 190 F. E. 567-568. 
The defendant apparently has in its machine at all times 
a pair of upper pressers. It sometimes uses three upper 



Rule 37 CLAIMS. 92 

pressers, but when it uses three, of course, it uses a pair as 
part of the three. 

Labombarde v. Lord Baltimore Press, 190 P. E. 187. 

If the plaintiff were the first to put them together to pro- 
duce a useful result, and his putting them together involved 
invention, no one else has the right to put the old things 
together in plaintiff's way to do plaintiff's work. If he can 
do such work withotit using some one of the elements which 
go to make up plaintiff's combination, plaintiff can not com- 
plain. 

Labombard v. Lord Baltimore Press, 190 P. E. 186. 

It is so generally the practice of patent solicitors to draw 
claims for an invention as applied to its most important use, 
and to hie combination claims which cover the invention in 
a special field of application, that the doctrine of "aggrega- 
tion" should not be applied to defeat this claim merely be- 
cause it includes a gas product and a gas bench, with retorts 
heated by the combustion of a gas generated by the producer, 
• as well as Doherty's new regulating means, whereby the pro- 
ducer gas is generated more economically, and thus the 
illuminating gas is more cheaply generated from the retorts. 
Combustion Utilities Corp. v. Worcester Gaslight Co., 190 
P. E. 161-162. 

He did not invent the combination. He invented, if he 
invented anything, an improved grab-hook. 

The combination claim is not good because one of its ele- 
ments is an invention in itself. 

Langans v. Warren Axe & Tool Co., 166 0. G. 986. 
See 190 P. E. 161-162. 

Where a combination of elements is old, claims to that 
combination should not be allowed, whether they state the 
elements of the combination broadly or specifically, unless the 
specific form of the elements themselves enter into the com- 
bination to produce a new result. 
Baker, 183 0. G. 505. 

The patentee is not confined to his combination claims un- 
less all of the elements are old. If any of the elements are 
new and useful, and show invention, these may be claimed 
and patented. This may be done in a separate or by separate 
and distinct claims in the patent covering the combination, 
even though such parts are without utility save in combina- 
tion with the other parts of the device. (Quotes authorities.) 

The purchaser has the right to the full enjoyment of his 
purchase, and an implied license to make repairs even to re- 



93 CLAIMS. Rule 37 

storing a part unless such part is made the subject of a 
patented change (authorities). 

JSTational M. Casting Co. v. Amer. Steel Foundries, 183 
F. E. 639-640. 
The law is well settled that every part of the combination 
claimed is conclusively presumed to be material to the com- 
bination. No evidence to the contrary is admissible. (Walker, 
§349; Hubbell v. U. S., 179 W. S. 83, 31 Sup. Ct. 34; 7 
L. L. Ed. 98.) 

Automatic Switch Co. v. Monitor Mfg. Co., 180 F. E. 
988. 
AVhile there is not a new mode of operation, except the fea- 
ture of the dash-pot, nor a new result, yet the old result is 
attained in a more beneficial and efficient way. 

Toledo Computing Scale Co. v. Moneyweight S. Co., 178 
F. E. 563. 
While it is true that in the invention defined by the ap- 
pealed claim the appellant has used features of construction 
which are independently old, as shown in the three patents 
cited, yet it is apparent that the appellant has brought these 
elements together in one practical device, so that they are 
made to cooperate one with another to produce a new and 
useful result patentable. 

Armstrong, 173 0. G. 359. 
A combination claim may not be construed as a good claim 
to one of its elements. 

Langan v. Warren Axe & Tool Co., "166 0. G. 986. 
A number of the elements of this combination are un- 
doubtedly old, but by means of its compact unitary structure 
and easy accessibility for purposes of inspection and repair 
and other advantages, it has achieved a result which entitled 
it to be characterized as an advance in the art for which pat- 
entability was properly claimed. 

Lasher v. Barrett, 166 0. G. 751. 
He is not entitled to a new combination merely because he 
has improved a single element of that combination. (In re 
McXeil, 30 App. D. C. 394.) He has improved an element 
of but has not made a new combination. 
Eatican, 162 0. G. 540-541. 
Though the combination of old elements in appellants' 
structure is undoubtedly an improvement over the prior art, 
and probably has resulted in the production of a stronger and 
more durable locker, and one of easier construction than be- 
fore existed, it is well settled that mere aggregation, when the 



Rule 37 CLAIMS. 94 

result is but a combination of the known functions of the 
various parts, is not invention. 

Hailes v. Van Warmer, 20 Wall 353 ; James Spear Stove 
& Heating Co. v. Kelsey Heating Co., 158 Fed. E. 622; 
In re Davenport, 23 App. D. C. 370. 
The contention that the patent calls for an aggregation of 
elements can not be sustained. The rule has been much modi- 
fied in later years, and it is no longer held that in order to 
constitute a valid combination patent, each element must 
directly coact upon each of the others to produce the result. 
Where all are necessary to produce the desired end, a com- 
bination may be implied. (Cases) 53 F. R. 367-371; 63 F. 
E. 582; Walker on Patents, S. 32. 

Dayton Malleable Iron Co. v. Forster, Waterburv Co., 
153 F. E. 201. 
Taking the whole pin-setter into consideration, I am of the 
opinion that it was possessed of patentable novelty of a low 
order, to be sure, but appreciable — and that such novelty 
could not be and was not in any way to be found in the mero 
form of apparatus for standing the pins upright in the open- 
ings of the pin-setting rack at any time. 

Brunswick-Balke-Collender Co. v. Backus Automatic Pin 
Setter Co., 153 F. E. 288. See per contra Wells v. 
Scranton Cold Storage & Warehouse Co., 153 0. G. 
181. 
A combination of three wheels, one of which is entirely 
dispensable, is not an infringement of a patent on a three- 
wheeled combination, no one of which can be dispensed with. 
Columbia Wire Co. v. Kokomo Steel & Wire Co., 139 F. 
E. 578. 
There is no cooperation between the alarm and the specific 
form of the means employed to actuate the engine-stopping 
mechanism. 

Adams, 111 0. G. 1623. 
It is not necessary in a new combination of old elements 
that each element should modify or change the mode of 
operation of all the others, but only that the combination 
should produce a new and useful result as a product of the 
combination. (Indicator & Casing.) 

McCormick v. Eobinson, 1906 C. D. 416, 124 0. G. 2903. 
A new part does not confer patentability upon an alleged 
combination claim, in which it appears as an element when 
such part acts in its own appointed way, performing its func- 
tion in the combination irrespective of the other. (In re 
McNeill, 20 App. D. C. 294-297.) 

In re Hawley, 1906 C. D. 576, 121 0. G. 691. 



95 CLAIMS. Rule 37 

In a time-lock safe doors a combination which makes no 
provision for automatically locking the door when closed, is 
inoperative. 

Sargent v. Burge, 1877 C. D. 62, 11 0. G. 1055. 

A claim for a machine or for a combination of mechanical 
devices is not invalid or insufficient because it fails to include 
mechanical devices for uniting or operating the machine or 
combination which readily suggest themselves to a mechanic 
skilled in the art, or which are pointed out in the specifica- 
tion and drawings as means for the purpose. 
Bramer v. Schroeder, 106 F. E. 918. 

All ingredients specified in a claim to composition are 
thereby made essential in analogy to combination claims. 
Ct. of Apps. D. of C. Lane v. Levi, 1903 C. D. 601, 104 
0. G. 1898. 

A combination claim seems to have been held to be in- 
fringed by a device which omitted one of the specific elements 
but retained the function thereof. 

McSherry Mfg. Co. v. Dowagiac Mfg. Co., 101 F. E. 716. 

A claim having an "oscillating tub^' as an element is sub- 
stantially different from one having a "tub" without limita- 
tion. 

easier, 1903 C. D. 292, 100 0. G. 1330. 

In an electric elevator system, the combination with a 
motor-supply circuit and contact blades and terminals for 
closing and opening the same of an armature-circuit arranged 
to rem.'iin closed until after said contact-blades have been 
brought to and past the stop position. 

Claim not found objectionable, but limited to locality and 
not time by the history of the case. 

Automatic Switch Co. v. Monitor Mfg. Co., 80 F. E. 988. 

The coiling device being merely an element of a combina- 
tion and not claimed as new per se, it may properly be pre- 
sented in terms broad enough to cover all forms of coiling 
device shown and described and all other known devices for 
performing the same function. 

Baackes, 1893 C. D. 70, 63 0. G. 909. 

Where there are claims which severally cover substantially 
the whole mechanism comprised in the invention, or a com- 
bination of several partially independent but co-operating 
parts of the same, and other claims, each covering a part or 
sub-mechanism, division will not be required unless the 
particular part or sub-mechanism in question is capable of 



Rule 37 CLAIMS. 96 

use in other relations and has acquired a distinct status in 
the arts. 

Hine, 1892 C. D. 11, 58 0. G. 385. 
It is well settled that it is not necessary to include in a 
claim for a combination, as elements thereof, all parts of the 
machine which are necessary to its action, save as they may 
be understood as entering into the method of combining and 
arranging the elements of the combination. 

Kitson. 1881 C. D. 49, 30 0. G. 1750; Skinner, 1881 C. 
D. 12, 19 0. G. 662. 
No element will be "read in" to a claim in order to limit 
its scope. 

Holley V. Vergennes Machine Co., 1880 C. D. 659, 18 
0. G. 1177; National Car Brake Shoe Co. v. Lake 
Shore E. E., 1880 C. D. 664, 18 0. G. 1179. 
The absence of the operating device is not fatal to any 
combination. A combination is patentable when it takes up 
a result, or effect, produced by any other part of the mechan- 
ism and impresses upon that result a new character, or form, 
or adds to it a new result. 

Banks v. Snediker, 1880 C. D. 95, 17 0. G. 508; Kent, 
1871 C. D. 301; Barcellos, 1880 C. D. 4, 17 0. G. 110; 
Franklin, 1873 C. D. 116. 4 0. G. 105; McMurray, 
1875 C. D. 134, 8 0. G. 943; Wilder, 1871 C. D. 125. 
A combination of five elements will anticipate a combina- 
tion of six including the five and producing the same effect, 
but the reverse is not true. 

Banks v. Snediker, 1880 C. D. 95, 17 0. G. 508. 
What is auxiliary and may be dispensed with can not be 
claimed. 

Wheat, 1879 C. D. 170, 16 0. G. 360. 
It is no objection to a combination claim that the parts are 
all cast together. 

Bland, 1879 C. D. 40, 15 0. G. 828. 
In a combination, the elements composing the same should 
cooperate to produce a common result. 
Lee, 1879 C. D. 12, 15 0. G. 512. 
A combination of distinct organisms is patentable. 

Scott V. Ford, 1878 C. D.^106, 14 0. G. 413. 
If the parts do not cooperate it is an aggregation and not 
patentable. 

Flagg, 1870 C. D. 104; AVagenen, 1872 C. D. 15; Camp- 
bell, 1878 C. D. 88. 
A combination claim for "A combined instrument which 



97 CLAIMS. Rule 37 

use certain parts in common," is proper, 

Sherman, 1875 C. D. 60, 7 0. G. 1054; Lehman, 1870 
C. D. 70. 
No ambiguity arises b}'' the omission of an element from 
specific mention in a claim, which element may be omitted 
from the combination, and such a claim is not inoperative. 
McMurrav, 1875 C. D. 134, 8 0. G. 943; Farrow, 1873 
C. D. i48, 2 0. G. 57; Eheutan, 1874 C. D. 51, 5 0. 
G. 521. 
A claim may be sometimes made in the collection of ma- 
chines, or devices, which do not in any sense cooperate in 
what may be strictly called their action. 

Sherman, 1875 C. D. 60, 7 0. G. 1054. 
The result or effect is the proper test of the validity of a 
combination. If the parts do not coact in producing a result 
it is not a proper combination. 

Lenes Vernon and Holden, 1873 C. D. 165, 4 0. G. 582; 
Hooper, 1874 C. D. 91, 6 0. G. 360. 
Where the elements cooperate to form a locking device a 
combination claim is proper. 

Farrow, 1872 C. D. 148, 2 0. G. 57. 
A legitimate combination claim which has only recently 
been recognized is where several devices are brought together 
but produce no new operation by that means, yet the combi- 
nation embraces some lement which is new in itself and gives 
the whole a new effect, and is thereby rendered patentable. 
Baker, 1873 C. D. 127. 
To form a proper combination it is only necessary that each 
device shall fill a necessary office, and act a necessary part in 
producing the result. They may act simultaneously or suc- 
cessively. ISTeither is it necessary that the parts of the com- 
bination shall be connected together by operating mechanism. 
Eynon, 1871 C. D. 239; Lvnch & Eaff v. Drvden & Un- 
derwood, 1873 C. D. 73,^3 0. G. 407; Sol Kuh, 1876 
C. D. 190. 
The claim should specify by some form of language the 
elements entering into the actual combination. 
Duckworth, 1870 C. D. 150. 
An arithmetical combination is not necessarily a combina- 
tion within the meaning of the patent law. 

Underwood, 1870 C. D. 52; Webster, 1869 C. D. 9; Smith, 
1874 C. D. 99, 6 0. G. 470. 
There is a class of combinations into which patented im- 
provements may enter as elements and of which they may 
form legitimate members. Such cases are those in which the 
patented device is itself improved, or made more effective by 



Rule 37 CLAIMS. 98 

the combination, or in which a new whole is produced by the 
union, or in which the combination does not lie in the legiti- 
mate and ordinary use of the patented improvement, but is 
so far out of the track of it as not to be obviously suggested 
by it, or in which the additional element is itself new, and 
could not have been in the contemplation of the patentee, 
among the modes of using, or applying his improvement. 
Rubens & Co., Assignees, 1870 C. D. 49. 
The words "connecting mechanism" required to be inserted 
in a combination claim. 

Thorne, 1869 C. D. 76. 
The correct rule as regards combinations would seem to be 
that the parts must necessarily be specified only up to that 
point beyond which the presence of the parts not named will 
be presumed as a matter of course, by reason of the known 
state of the art, or from the very necessities of the case. 

Wilder, 1871 C. D. 125; Kent, 1871 C. D. 301. See also 
cases of McMurray, 1875 C. D. 134, 8 0. G. 943; 
Farrow, 1873 C. D. 148, 2 0. G. 57; Thorne, 1869 
C. D. 76. 
In re Thomson, 1906 C. D. 566, 120 0. G. 2756. 
A legitimate combination may be claimed which includes an 
element not shown or specifically described in the specification 
and drawings. 

Eubens & Co., Assignees, etc., 1870 C. D. 49. 

(7) Elements. 

The Office is no more competent than the courts to say that 
an element which an applicant has placed in his claims is an 
immaterial one. (Streta v. Freckleton, 87 0. G. 695.) 
Collom V. Thurman, 131 0. G. 359. 
No valid reason is apparent why the actuating connection 
and one of its elements should not be independently recited 
in the claim. The function of said element is distinct from 
that of the actuating mechanism. 

Duncan, Prichard and Macauley, 1906 C. D. 348, 124 
0. G. 1207. 
A description of an element that necessarily confines it to 
a certain locality, limits the claim to elements having that 
location seemingly. 

Annand v. Spalckhaver, 1901 C. D. 212, 97 0. G. 2083. 

The man skilled in the art would not have found in that 

art anything which would have told him precisely what that 

length of wire should be. The claims does not give any 

formula for determining what it should be, and if the specifi- 



99 CLAIMS. Rule 37 

cation were equally silent there might be some question as to 
whether Stanley had really contributed anything of import- 
ance to the art, certainly it would yet remain for others to 
inform the art just how to find out a length which would 
operate as indicated in the claim. But when the patentee 
enumerates in his claim as one element of his combination a 
wire. It is not believed to be proper practice for the Of&ce 
to give its sanction to a statement in the claims intended 
merely to define its scope.. 

Schwietzer, 1901 C. D. 179, 97 0. G. 1372. 
Combination element. 

Porter v. Loreden, 1895 C. D. 707, 73 0. G. 1551. 
A combination claim including the subject operated upon 
with the machine operating upon it is inappropriate as is 
also a combination including the operating mechanism, the 
machinery operating, and the subject operated upon. 

Franklin, 1873 C. D. 116, 4 0. G. 105. 

(10) Reference Letters. 

The claims are lettered, and while such claims do not neces- 
sarily, and in all cases, prevent an invocation and application 
of the doctrine of equivalents, still as a general rule they are 
deemed restrictive. It depends upon the state of the art. 

Washburn v. Consolidated Safety Pin Co., 197 Fed. E. 
556. 

A claim including as an element "a tooth 5" construed to 
be limited to a tooth located on a rib as the tooth 5 was. 

The claim could not have been sustained unless the rib was 
included. 

Irvington Mfg. Co. v. TJtica Drop Forge & Tool Co., 191 
F. E. 169. 

The use of reference letters does not necessarily confine a 
claim to a part having all the characteristics of the part, in 
the drawings, as indicated by that letter or numeral, because a 
claim which expressly covers a particular device impliedly cov- 
ers any equivalent of that device. Walker on Patents (4th 
Ed.) pp. 101-102. The breadth or narrowness of a claim as 
the case may be, does not depend upon any artificial rule of 
interpretation, and to narrow a broad invention by reference 
letters or numerals alone, would be to frame and enforce such 
a rule. Walker on Patents, 117, and cases there cited. 

Electric Candy Machine Co. v. Morris, 156 F. E. 974. 

The use of reference letters in the claim does not neces- 
sarily limit the inventor to the exact form or configuration 
of parts which is thus portrayed and described, without re- 



Eule 37 CLAIMS. 100 

gard to possible equivalents thereto. It may, or it may not, 
according to circumstances, as the authorities abundantly 
show. Eeed v. Chase, 25 P. E. 94; Delemator v. Heath, 58 
F. E. 414; Campbell Printing Press v. Harden, 64 P. E. 782; 
McCormick Harvesting Machine Co. v. Aultman, 69 P. E. 
371-393; Muller v. Tool Co., 77 P. E. 621; Kelsev Heating 
Co. V. Spear Stove Co., 155 P. E: 980; Sprinkler Co. v. 
Koehler, 82 P. E. 428-431; Eoss Mfg. Co. v. Eandall, 104 
Ped. E. 355; ISTational Brake Beam Co. v. Interchangeable 
Brake Beam Co., 106 Ped. E. 715, ]^or are the cases which 
are sometimes cited to the contrary (Weir v. Morden, 125 U. 
S. 98; Hendy v. Miners Iron Works, 127 IT. S. 370; Lehigh 
Valley E. E. v. Kearney, 58 IJ. S. 461) to be differently un- 
derstood. It is after all a matter of construction, in which 
while a reference by letters to the drawings and specifications 
may be regarded as a rule, as involving a greater particularity 
of description than without them the real scope of the inven- 
tion is nevertheless to be considered and given due weight. 
'No doubt there are cases where, by reasons of the limitations 
imposed by the prior art, it is necessary, in order to, distin- 
guish and save the invention, to confine it to a certain form 
or arrangement of parts, which the use of reference letters 
may effectively serve to do. But where no such necessity ex- 
ists, the patent is to be taken as a whole in which the refer- 
ence to the drawings merely goes in with the rest. 

Kelsey Heating Co. v. James Spear Stove & H. Co., 155 
P. E. 980-981. 
If a patentee acquiesces in the limitations suggested by the 
Patent Office, and the essential elements of the claim are 
alluded to by reference letters indicating that the Patent 
Office intended to restrict the claim to the particular device 
described, a claim to a broader scope can not be maintained. 
Good Porm Mfg. Co. v. White, 153 P. E. 759. 
Letters of reference do not restrict claim to the specific 
form. 

Hall, Hollow Brake Beam Co. v. Interchangeable Brake 
Beam Co., 1897 C. D. 739, 106 0. G-. 693. 
Eeference letters in claims. 

Eoss-Moyer Mfg. Co. v. Eandall, 104 P. E. 355. 
Eeference letters used in claim. 

McCormick Harvesting Machine Co. v. Aultman & Co., 
1895 C. D. 754, 73 0. G. 1999; Perrin v. Manhattan 
E. E., 1893 C. D. 212, 62 0. G. 1209; Parry Co. v. 
Hitchcock Co., 1893 C. D. 463, 64 0. G. 860. 



101 CLAIMS. Rule 37 

It is difficult to see how the applicant could have been more 
explicit without specifying all the parts by letters. 
Shippen, 1895 C. D. 136, 80 0. G. 727. 
The substitution of letters of reference for the proper ver- 
bal description may tend to render a claim ambiguous, never 
more exact, while with the proper description in words their 
use becomes altogether unnecessary. 
Parker, 1871 C. D. 293. 
A claim relying on the use of reference letters to indi- 
cate structure is vague, indefinite, and does not convey an 
intelligible idea. 

Thomas, 15 Gourick's Digest 38-18, May, 1903. 
A claim relying on the use of reference letters to indicate 
structure is vague, indefinite, and does not convey an intelli- 
gible idea. 

Thomas, 15 Gourick's Digest 38-18, May, 1903. 

(11) Multiplicity of Claims. 

See paper upon this subject read before the Examining 
Corps of the TJ. S. Patent Office, Kov. 16, 1916, by William 
E. Pratt. 

Applicant can not be permitted to multiply his claims by 
presenting alleged combinations which distinguish from the 
real invention only by including elements which are old in 
the art and perform no new function. 
Whitelaw, 219 0. G. 1237. 

Scale case, see Standard Tvpewriter Co. v. Standard 
Folding, etc., 219 0. G. 269. 
"Means for maintaining said carrier and pattern in parallel- 
ism with themselves." The defendants have no such means. 
Their machine is equipped with the pegs or dowel pins of the 
old art, instead of the V-shaped guide bars which constitute 
the complainant's means for maintaining the parallelism re- 
ferred to and these pegs or pins do not prevent tilting of the 
plate as it is drawn, no infringement. 

Tabor Mfg. Co. v. Mumford Co., 191 F. E. 160. 
The consideration of the merits of the applicant's alleged 
novel combination was embarrassed, and possibly prejudiced, 
by the great number of claims presented and insisted upon 
throughout the proceedings in the Patent Office. 
Thomson, 1906 C. D. 566, 120 0. G. 2756. 
Multiplication of claims not permitted as it imposes a need- 
less burden upon the Office and may lead to a strict construc- 
tion of the patent. 

Chapman, 1906 C. D. 79, 120 0. G. 2446. 



Rule 37 CLAIMS. 102 

It is clearly the duty of this Office to see that patents do 
not issue with claims so multiplied as to embarrass and con- 
fuse the public. It should allow sufficient claims to amply 
protect the real invention, but should not permit needless 
repetition. 

Both, 182 0. G. 974; Chapman, 120 0. G. 446. 

But the only valid objection to a multiplication of claims 
is when it appears that the applicant is trying deceitfully to 
go beyond the fair scope of his invention. 

There is nothing improper so far as I can see, in first put- 
ting your claims as broadly in good faith as you can, and 
then ex dbundante Cauteli, following them with narrower 
claims designed to protect you against possible anticipations 
of which you are not aware. 

No one can know in advance how far anticipation will go 
or how little in the end his patent will cover. 

Parke-Davis & Co. v. H. K. Mulford Co., 189 F. E. 102! 

It must differ from each of the rejected claims in other 
respects than in form since if there is no difference in sub- 
stance there is no justification for retaining both claims. 

Said of a claim presented for appeal under Eule 68. 
Wirt, 1905 C. D. 247, 117 0. G. 599-600. 

The practice of unduly jnultiplying claims is to be con- 
demned; but on the other hand, an applicant should be given 
a reasonable latitude in presenting claims in order that he 
may not be deprived of his right to adequately cover his 
invention. 

Massie, 1904 C. D. 567, 113 0. G. 2505. 

The claims should not be unnecessarily multiplied. 
Carpenter, 1904 C. D. 669, 112 0. G. 503. 

If claims are needlessly multiplied the Office should reject 
all except those necessary to define the subject matter. 
Johnson, 1891 C. D. 16, 54 0. G. 505. 

A repetition of a claim is proper in cases which are diffi- 
cult of definition, and where one set or form of words would 
be inadequate to clearly cover the invention and prevent mis- 
construction, or where the applicant can not set forth in a 
single claim the device broadly, so that it will cover all other 
devices which are equivalents at the same time the specific 
device he has invented and described. 

Woodruff, 1880 C. D. 90, 17 0. G. 453. 

Repetition of claims. 

See Bland, 1879 C. D. 40, 15 0. G. 828. 



103 CLAIMS. Rule 37 

(12) Means, Mechanism, Etc. 
Its definition has been settled by this court in the case of 
LecoroLx v. Tyberg, 33 App. D. C. 586, 150 0. G. 267. 
Johnson v. Martin, 201 0. G. 267. 
He described and claims means; but this did not exclude 
others from devising and obtaining a patent for means to ac- 
complish the same result, keeping the light-emitting part of 
an arc-lamp globe clean and clear of deposits, provided they 
devised different means, however much simplified, not within 
the range of equivalents for those described and claimed. 

Loraine Development Co. v. General Electric Co., 198 
F. E. 115. 
The unqualified terms "cutters" "means for reciprocating 
one of said parts with respect to the other" and a "mechanism 
for finding" said cutters, elements of claim 2, are limited to 
cutters which reciprocate in their operation on a lead blank 
as distinguished from a constant relation of the cutters in the 
same direction, and to a feeding mechanism consisting of a 
feed screw for moving cutters toward each other. 

Electric Storage Battery Co. v. Gould Storage Battery 
Co., 197 Fed. E. 750. 
It is well settled that means accompanied by a statement 
of function is a proper way to cover one element of a com- 
bination. 

AVilliams, 183 0. G. 504. 
In view of the fact that the Priest patent ties the patent 
down to means for automatically supporting the latch, and 
as the defendants have ignored the means of the other patent 
and means working on a different principle and adopted other 
radically different means, I think the defendants do not 
infringe. 

General Electric Co. v. Altes Chambers Co., 171 0. G. 
620. See case in Court of Appeals, 178 F. E. 273. 
A device using substantially a different means held not 
infringing. 

General Electric Co. v. Allis-Chalmers Co., 178 F. E. 
273. See also, Curtain Supply Co. v. National Lock 
Washer Co.,- 178 F. E. 95. 
It may be permissible at times to claim, as an element of 
a combination "means" otherwise unspecified, for effecting a 
certain mechanical result, this being particularly the case in 
inventions of a broad and primary character. But without 
undertaking to decide just when it may and may not be em- 
ployed, it is enough to say that, for the reasons given, it is 
not a sufficient assignation here. 

Eastern Dynamite Co. v. Keystone Powder Mfg. Co., 164 
F. E. 59. 



Eule 37 CLAIMS. . 104 

Claims. Means, etc. 
Laeroix v. Tyberg, 150 0. 6. 266. 

The distinction between a practically operative mechanism 
and its function is said to be difficult to define. (Rob. Pat's, 
see 144 et seq.) It becomes more difficult when a definition 
is attempted of a function of an element of a combination 
which are the means by which other elements are connected 
and by which they coact and make complete and efficient the 
invention. But abstractions need not engage us. The claim 
is not for a function; but for mechanical means to bring into 
working relation the folding-plate and the cylinder. This 
relation is the very essence of the invention, and marks the 
advance upon the prior art. It is the thing Avhich has never 
been done before. 

Continental Paper Bag Co. v. Eastern Paper Bag Co., 
136 0. G. 1297. 

The use of the word Means limited by a statement of func- 
tion has long been recognized as a proper method of stating 
an element of a combination claim (Cases cited). 
Young V. Eick, 1904 C. D. 465, 113 0. G. 547. 

An example of a claim limited by mechanical construction 
that seems to me only expressible properly by its function. 
Macdonald v. Eeison, 1902 C. D. 243, 105 0. G. 973. 

Claims containing the term "mechanism" limited only by 
the functions which such mechanism performs, to designate 
the specific device and equivalents thereof which the applicant 
has grouped together as the elements of his combination, have 
of late been uniformly held to be in proper form. 
Halfpenny, 1895 C. D. 91, 73 0. G. 1135. 

Claims which define the construction as "means," "mechan- 
ism" or "devices" for effecting certain results or define cer- 
tain named elements or the device by statement of function 
instead of structure should be objected to if vague or in- 
definite or rejected on references disclosing the combination 
and the functional qualifications of both. 
Knudsen, 1895 C. D. 29, 72 0. G. 589. 

Where the words "means" was employed to set forth func- 
tions and contained no limitation with respect to the con- 
struction or mode of operation as distinguished from the re- 
sult, and it designated that portion of the claim in which 
the novelty resided, held that such claim was vague and 
indefinite. 

Pacholder, 1890 C. D. 55, 51 0. G. 295. 



105 CLAIMS. Rule 37 

Where in a claim the language following the words "means'* 
and "mechanism" was employed to set forth function, but 
contained limiting or qualifying words other than those which 
set forth the result accomplished. Held that such claim was 
not vague and indefinite. 

Pacholder, 1890 CD. 55, 51 0. G. 295. 

The expression "Means for effecting operating functions in 
the embroidering machine," the claims containing this expres- 
sion (operating function) can not be readily understood. If 
the intention was to limit the claims by the expressions in 
question merely to an operating element of an embroidering 
machine, such result should be effected unmistakably by the 
use of this or equivalent language, but if the intention was 
that the claims should be limited to a specific element or to 
an element belonging to a particular class of elements in such 
machines this intention should likewise be carried out with cer- 
tainty by the use of unmistakable language. 
Groeble, 1905 C. D. 453, 118 0. G. 2537. 

An applicant should be allowed to claim his invention as 
broadly as possible in view of the state of the art. The use 
of the term "means" with the proper qualifying words, is not 
prohibited by any decision of the Office or courts. 
AVeaver, 1897 C. D. 165, 81 0. G. 967. 

"Means" followed by a statement of function is properly 
readable on a structure in which such means consists of more 
than one element. 

Lacroix v. Tybug, 148 0. G. 831. 

(13) Process — Function of a Machine. 

The function of a machine, or the result produced by its 
operation, is not patentable. 

]*^ational Hollow Brake Beam Co. v. Interchangeable 
Brake Beam Co., 1897 C. D. 739, 81 0. G. 1423. 
Where the word "Adapted" is used it does not necessarily 
imply a combination with an element to which the word 
adapted refers. 

Kertey v. Clements, 216 0. G. 1319. 
It has long been settled law with respect to machine pat- 
ents that no patent can validly issue for the mere function 
or abstract effect of a machine, but only for the mechanism 
which performs or produces it. 

Union Special Mach. Co. v. Singer Mfg. Co., 215 F. E. 
598-602. 
The patentee could not obtain a valid patent for the mere 
statement in language of the physical phenomena observable 



Eule 37 CLAIMS. 106 

by the operation and use of the different parts of the device. 
(Marchane v. Emken, 133 XJ. S. 195.) 

Lovell-M'Connell Mfg. Co. v. Automobile Supply Co., 
212 F. E. 204. 
It was not necessary that he should have claimed it in spe- 
cific terms if the device itself disclosed it in Diamond Eubber 
Co. V. Consolidated Eubber Tire Co., 220 W. S. 428, the S. 
C. said . . . It is no concern of the world whether the 
principle upon which the new construction acts be obvious or 
obscure, so that it inheres in the construction. 

Horton Mfg. Co. v. White Lily Mfg. Co., 208 0. G. 655. 
Although the word "Combustible'^ has no functional sig- 
nificance still as it tends to more definitely define the inven- 
tion it is within the discretion of applicant to use it. 
Pease, 202 0. G. 631. 
3. In a spring-cushion structure, the combination of an 
upright vertically coiled spring; a strip of sheet metal with 
inturned opposite edges folded onto and embracing the oppo- 
site sides of the bottom coil of said spring, whereby said spring 
is supported and retained in position. 

This does not cover the devices as to its function of acting 
as a beam to support the spring from vertical movement. 
Sheffield Car Co. v. D'Arcy, 194 P. E. 690. 
The heater and cooler had been made the subject of an 
application for a patent. The application for the process was 
later. TsTo patent shown to have issued on first; but the fact 
that the applicant claimed the apparatus as an invention is 
sufficient of itself to eliminate the function or operation of 
that apparatus from the claim of invention for the process. 
W. S. Consol. Eaisins Co. v. Selma Pruit Co., 194 P. E. 
269-270. 
The invention or discovery of a process or method involving 
mechanical operations and producing a new and useful result 
may be within the Pederal Statutes and entitle the inventor 
to a patent for his discovery. (Supreme Court of the U. S.) 
Expanded Metal Co. v. Bradford and The General Pire- 
proofing Co. v. The Expanded Metal Co., 143 0. G. 
863. 
One can not describe a machine which will perform a certain 
function and then claim the function itself, and all other ma- 
chines that may be invented by others to perform the same 
function. 

Gardner, 140 0. G. 258. 
Claim 2 — "In a machine for the manufacture of crayons, 
carpenters' chalk or other like articles, the combination of two 



107 CLAIMS. Rule 37 

sectional mold plates together forming a complete mold, said 
mold being open at one end, said mold plates adjustable rela- 
tive to each other in line with the length of the mold." 

The movement of a machine irrespective of the mechanism 
which causes it can not be patented, it would be virtually giv- 
ing a patent for the result, regardless of how reached. (The 
doctrine of equivalents was, however, applied and infringe- 
ment of other claims was found.) 

American Crayon Co. v. Sexton, 139 F. E. 564. 

It would seem that a claim that recites a function and some 
structure, but not enough to support the function, stands on 
the same footing as a functual claim and should be rejected. 
Bitner, 140 0. G. 256. 

It is competent, when the circumstances of the cavSe permit 
of it, for an inventor in describing a machine or apparatus 
which he has devised to make a claim for a process which his 
patented device is capable of carrying out. But to entitle him 
to do this, the process must be one capable of being carried 
out by other means than by the operation of his patented 
machine, and unless such other means are known or within 
the reach of ordinary skill and judgment, the patentee is 
bound to point out, for unless the public are informed by what 
other means tlie process can be carried out, the process is to 
them nothing else than the operation of the machine, in other 
words the exercise of its function. The function of a machine 
is not patentable. 

White, 136 0. G. 1771. 

Functional claims, that is, claims for a function merely or 
which fails to include sufficient mechanical elements to effect 
the function expressed in the claim, are open to objection, and 
from objection made on such ground petition may be taken 
to the Commissioner. 

On the other hand, claims which while including sufficient 
mechanical elements to effect a function stated therein, depends 
upon that statement of function to distinguish them from 
what is old in the prior art are not to be objected to as func- 
tional, but are open to rejection if in the opinion of the 
Examiner the statement of function is insufficient, the ques- 
tion being a question of merits and not of form. 

Plumb, 131 0. G. 1165; citing McMullen, 84 0. C. 507. 

The mere function of a machine is not patentable. 

Steinmetz, 1905 C. D. 249. 117 0. G. 901; Frasch, 1905 
C. D. 264, 117 0. G. 1167. 

To merely state in a claim the function or the result without 
first including therein the structure by means of which the 



Rule 37 CLAIMS. 108 

function or result is obtained renders a claim vague and in- 
definite. 

Kotler, 1901 C. D. 62, 95 0. G. 2684. 
Functional claims are : First, those covering a function, 
result or effect not a product or composition of matter; second, 
those covering the function of a machine or apparatus; third, 
those reciting the functions of elements and not their struc- 
ture; and fourth, those defining sets of mechanism by state- 
ments of the results produced. 1st. Should be rejected. 
3d. Should be rejected. 3d. Should be objected to if vague 
or indefinite, otherwise receive action on their merits. 4th. 
Are bad in form and should be objected to, but should also 
receive action on their merits. 

Knudsen, 1895 C. D. 29, 72 0. G. 589. 
A description of the function which a feature performs and 
the manner of its construction does not render a claim ob- 
jectional as being functional. 

National Car Brake Shoe Co. v. Lake Shore & Mich. 
Southern R. R. Co., 1880 C. D. 664, 18 0. G. 1179; 
Keith, 1876 C. D. 93, 9 0. G. 744; Hahn, 1875 C. D. 
1078, 8 0. G. 597; Gray, 1877 C. D. 18, 11 0. G. 329; 
Shippen, 1875 C. D. 126, 8 0. G. 727. See, however, 
Ives, 1878 C. D. 134, 15 0. G. 385; Scott v. Ford, 1878 
C. D. 106, 14 0. G. 413. Claims of this description 
involved in Sargent v. Hall, etc., Co., 15 A. E. 573 ; 
Holley V. Vergennes Co., 1880 C. D. 661, 18 0. G. 
1177. 
That a claim is purely functional is always a proper objec- 
tion to it. 

Shippen, 1875 C. D. 126, 8 0. G. 727; Harrison, 1876 
C. D. 170, 10 0. G. 373; Hicks, 1879 C. D. 200, 16 
0. G. 546. 
A claim fairly susceptible of an interpretation which ren- 
ders it functional is inadmissible. 

Ives, 1878 C. D. 134, 15 0. G. 385. 
A claim to a mechanism having certain capabilities without 
reference to the mechanism, or instrumentalities whereby those 
capabilities, or functions, are obtained is bad, unless it be 
construed to mean the combination of instrumentalities where- 
by the recited effects or functions, are produced. Good prac- 
tice requires that the specification and claims in a patent shall 
mean just what they seem to mean. 

Anders v. Gilliland, 1880 C. D. 1, 19 0. G. 177 ; Arkell, 
1871 C. D. 263; Ives, 1878 C. D. 134, 15 0. G. 385. 
A claim reciting definitely the article invented, and quali- 



109 CLAIMS. Rule 37 

fying its structure by describing the function performed is not 
functional, but an approved form. 

Gray, 1877 C. D. 18, 11 0. G. 329; Keith, 1876 C. D. 
93,. 9 0. G. 744. 
The function of a machine is that operation, which when 
set in motion it inevitable performs. - 

Shippen, 1875 C. D. 126, 8 0. G. 727. 

(14) Difference in Claims. 
The claims may be to the same thing though this thing 
was used in quite different devices. 

Walker v. Brunhoff, 1905 C. D. 454, 118 0. G. 2537. 
A claim stating that a reagent is added during the manu- 
facture of a compound is not a duplicate of a claim in which 
"during the manufacture of the compound" is omitted. 
Reese, 1904 C. D. 484, 113 0. G. 849. 
If two claims are only distinguished by the words "sub- 
stantiallv as described" one must be cancelled. 
Shepler, 1903 C. D. 17, 102 0. G. 468. 
Two claims in the same application which differ only in 
reference letters are so similar as not to be both allowable. 
Ex parte Osborn, 1900 C. D. 137, 92 0. G. 1797. 
The Office is more liberal in construing the difference be- 
tween claims in one application than if they were in separate 
application, both as to the materiality and patentability of 
those differences. 

The tests of patentability are the same in kind but are not 
so rigidly applied as if the claims were in different applica- 
tions. 

Griffith, 1898 C. D. 233, 85 0. G. 936. 
Two claims are not, as a matter of form, substantially alike 
when corresponding elements are set forth broadly in one and 
specifically in the other, and when one includes an element 
neither actually nor impliedly included in the other. 
Baackes, 1893 C. D. 70, 63 0. G. 909. 

(15) Indefiniteness, Vagueness. 
Claims for an apparatus which includes among other ele- 
ments an "arrester," a "mechanical separator," and a "chem- 
ical separator," are not vague and indefinite on account of 
their failure to state the specific characteristics of such ele- 
ments where the description fully and clearly describes the 
construction referred to by such terms, the objection going 
to the breadth or scope of the claims rather than to their 
form. 

Donk, 1905 C. D. 498, 119 0. G. 965. 



Eule 37 CLAIMS. 110 

It is not alleged that the invention can not be fully and 
readily understood from the present specification, nor does it 
appear that the claims are rendered indefinite or ambiguous 
by the word "stretcher" or that the applicant's use of the 
word is absurd or clearly erroneous. Objection to use of 
word overruled. 

Welch, 1905 C. D. 136, 115 0. G. 1850. 
As to indefiniteness of claims, see, 

Scott V. Ford, 1878 C. D. 106, 14 0. G. 413. 
A claim is improper that refers to a substance as a gas, 
after it has been liquified, and that makes the process of 
liquification a part of the process of making the gas. The 
claim "as an article of manufacture and sale, liquified chloro- 
methyl sulphurous gas in a receiver, substantially as de- 
scribed" is indefinite, as it may mean either the receiver and 
its contents, or its contents alone. 

Du Motay, 1879 C. D. 269, 12 0. G. 1002. 
The constructing, etc., is ambiguous. 
Cornell, 1872 C. D. 120, 1 0. G. 573. 

(16) Alternative — Modifications — Equivalents. 

If part of a combination is stated to be a square table on 
four legs, and neither the shape of the table nor the number 
of legs is a matter of any importance, so long as the table is 
large enough and is maintained in a horizontal position, a 
triangular table on 3 legs would be an equivalent of the ele- 
ment specified. 

Autopiano Co. v. American Player Action Co., 217 0. G. 
1055-6. 
The equivalency of other metals with iron is to be found 
not in their chemical sti'ucture, but in their functional effici- 
ency wlien combined with cerium in a metallic alloy (c?ises 
distinguished). If in the claimed scope there is an element 
not having the function the claim is too broad, etc. 
Treibachcr v. The Eoessteret, 209 0. G. 1689. 
Yielding means for forcing rolls together infringed by rolls 
having vielding surfaces. 

Palmer v. Jordan, 192 P. P. 42. 
The words "or equivalents" objectionable in claims. 

Phillips, 135 0. G. 1801. 
Where an applicant employes two terms to designate a par- 
ticular element, both of which terms describe the element 
correctly, the claim has been held to be unobjectionable since 



Ill CLAIMS. Rule 37 

the applicants alternativeness is of language rather than of 
structure (cites Holder, 107 0. G. 833). 
Phillips V. Sensenich, 132 0. G. 677. 
The range of equivalents depends upon the extent and 
nature of the invention. , If the invention is broad and pri- 
mary in its character, the range of equivalents will be cor- 
respondingly broad under the liberal construction which the 
courts give to such inventions. 

Continental Paper Bag Co. v. Eastern Paper Bag Co., 
136 0. G. 1297. 
There seems to be no good reason, therefore, why the appli- 
cants should not in their claims identify the substance used by 
a statement of the characteristics necessary. The words "brick 
or the like'' are not a broad statement of the characteristics, 
but are alternative in form and indefinite in substance. 
Caldwell and Barr, 1905 C. D. 58, 120 0. G. 2125. 
A mechanical equivalent must be adapted to use as a sub- 
stitute for something else, and competent to perform the 
function of a particular device for which it may be substi- 
tuted. The word "equivalent" means equal in force or effect. 
11 Am. & Eng. Enc. Law (2d Ed.) 252. 

Alacka Parkers Assn. v. Lelson, 119 F. E. 611. 
The maxim "inumeratio unius exclusio alterius," by reason 
of the doctrine of equivalents does not apply as fully to pat- 
ents as to instruments in general. 

Eeece Button-Hole Machine Company v. Globe Button- 
Hole Machine Companv, 1894 C."D. 360, 67 0. G. 
1720. 
In the present case if the applicant desires nothing more 
than the benefit of the law of equivalents, the expression "or 
equivalent cleaning device" is surplusage. If he desires some 
advantage beyond that which the law of equivalents gives 
him, he is seeking more than can properly be accorded him. 
i:!ook, 1890 C. D. 81, 51 0. G. 1620. ^ 
Modification can not be claimed. 

Bogart, 1876 C. D. 163, 10 0. G. 113. 
A claim having the phrase "one or more" is alternative in 
form, if the elements covered by such phrase are not dupli- 

Hulbert, 1893 C. D. 74, 63 0. G. 1687; Thorsen, 1893 

C. D. 75, 63 0. G. 1688. 

Alternative claims and claims for modifications have been 

repeatedly condemned, the former for uncertainty, the latter 

for the reason that if the alleged modifications are in fact the 

same invention, a claim to one obviously covers the other, and 



Eule 37 CLAIMS. 112 

if they are for diiferent inventions they are not allowable in 
one application. 

McDongall, 1880 C. D. 147, 18 0. G. 130; Eied, 1879 C. 
D. 70, 15 0. G. 882. See Walker on Patents, sec. 176, 
p. 126. 
The word "equivalents" in a claim should be very carefully 
scrutinized, especially in reissue applications, but it might be 
admitted if it did not render the claim ambiguous. 
Haase, 1873 C. D. 170, 4 0. G. 610. 
The words "or their equivalents," when they refer to well 
defined devices, are not objectionable. 

McLelland. 1872 C. D. 152; Continental Windmill Co., 
1870 C. D. 74. 

(17) Article of Manufacture. 

A sound record made from a cut laterally undulatory groove 
diverging from the bottom of the same to the surface of the 
record tablet. 

A^ictor Talking Machine Co. v. American Graphophone 
Co., 189 Fed. E. 359-366. 
Of course, claims for a product not defined as the product 
of a process must contain in themselves adequate differentia, 
or they will not be good. 

Parke-Davis & Co. v. H. K. Mulford Co., 189 F. E. 
95-102. 
As a new product, crystalline calcium carbid existing as 
masses of aggregated crystals substantially as described. Sus- 
tained. But said to be limited to an aggregated crystals. 
Patentable novelty in a case like the present, may be founded 
upon superior efficiency; upon superior durability, including 
the ability to retain a permanent form when exposed to the 
atmosphere ; upon a lesser tendency to breakage and loss ; upon 
purity and in connection with other things, upon comparative 
cheapness. Commercial success may properly be comf)ared 
with mere laboratory experiments. 

Union Carbide Co. v. American Carbide Co., 160 0. G. 
493. 
Seems to and does recognize claims for articles defined by 
the method of making them. 

Hosier Safe Co. v. Hosier, 127 U. S. 354. 

"The process may be referred to in defining the article only 

when it can not be otherwise defined." (Apparently dictum.) 

"The structure of the article when finished does not reveal 

the particular procedure specified in the claim." Therefore, 

the claim is improper. 

Scheckner, 106 0. G. 765. 
If an article of manufacture is a new thing, a useful thing. 



113 CLAIMS. Rule 37 

and embodies invention, and that article can not be properly 
defined and discriminated from the prior art otherwise than 
by reference to the process of producing it, a case is presented 
which constitutes a proper exception to the rule. 

Eefers to Globe Nail Co. v. W. S. Horse Kail Co., 19 F. 

E. 819; Painter, 57 0. G. 999 (approved 106 0. G. 
765). 

Dental plate made of hard rubber. The material made it 
possible to make a satisfactory plate as well as contributing 
by its characteristics to make the completed plate successful. 
Smith V. Goodyear, 93 IT. S. 486. 
A claim for an article defined by the process of making it 
was rejected for this reason and the rejection affirmed by the 
Board and the Commissioner returned it to the Primary 
Examiner for consideration on the merits. 
Eogers, 1890 C. D. 121, 52 0. G. 460. 
After a patent is granted for an article described as made 
by causing it to pass through a certain method of operation to 
produce it, the inventor can not afterwards, on an indepen- 
dent application, secure a patent for the method or process. 
Cited from Trevette, 97 0. G. 1174; Hosier Safe & Lock 

Co. V. Hosier, Bohmann & Co., 43 0. G. 1115. 
Eisdon Iron & Locomotive Works v. Hedart et al., 71 0. 
G. 751. 
A plate or dish cut or scooped from a block of wood in 
concavo-confix form. Good. 

Oval Wood Dish Co. v. Sandy Creek Wood Hfg. Co., 60 

F. E. 285. 

Said not to be an authority to the effect that an article may 
never be defined bv the process of making it. 

Painter, 57 6. G. 1000; Eumford Chemical Works v. 
Sauer, 10 Blatch 162. 
Type-block with letters, figures or characters produced there- 
on in the manner substantially as described. The article was 
old, the novelty was in the process entirely. Said not to sus- 
tain the proposition that a claim to an article may never be 
defined and limited bv the process of making the article. 

Painlir, 57 0. G". 1000; Draper v. Hudson, 6 Fish. 327, 
3 0. G. 354. 
"Artificial alizarine produced from anthracine or its deriva- 
tives by either of the methods herein described, or by any 
other method which will produce a like result.^' 

If this product is the same as the alizarine obtained from 
matter it is old; if it is different and is only the product pro- 



Eule 37 CLAIMS. 114 

duced by the process described, it is not shown that defendant 
has infringed. 

Every patent for a product or composition of matter must 
identify it so that it can be recognized aside from the descrip- 
tion of the process of making it, or else nothing can be held 
to infringe the patent which is not made by that process. 
Page 817. 

Cochrane v. Badische Anilin Co., 27 0. G. 813, 111 U. 
S. 293-313. 

A difference in the physical characteristics of the pulp made 
by the process was alleged. 

It seems to be assumed that if the facts were so, the product 
of that process would be patentable, but it is said that this 
was not the fact. 

The Wood Paper Patent, 23 Wall. 566. 

A nail made by punching or cutting from hot-rolled ribbed 
bars of metal a headed blank, substantially as described, and 
by elongating hardening, and compressing the shanks of such 
blanks by cold-rolling from the head to the point, thereby 
giving to all parts of the nail so produced the peculiar quali- 
ties specified. Good claim, see Painlir infra. 

Globe Nail Co. v. W. S. Horse Nail Co., 19 F. E. 819. 

A valve-cup constructed of or from horn. 

"The claim is to be for an article of manufacture ; and it 
will cover the same article whether manufactured by the 
process described or otherwise." 

Shalters, 1879 C. D. 79, 15 0. G. 970. 

"Molded in the manner and for the purpose" may mean 
that a certain process is pursued, or that the artificial char- 
coal, when completed, is possessed of certain distinguishing 
characteristics. 

In the first case it has nothing to do with the finished 
product, in the second/ resort, must be had to the specification 
and the claims must express their own meaning. 
Designolli, 1878 C.'D. 10. 

An inodorous and waterproof straw plastering board made 
in continuous lengths and wound in rolls. Eeference to process 
improper. 

Judd M. Cobb, 1874 C. D. 60. 

The fact that an article is only ^iseful in connection with 
some other thing does not necessarily make it unpatentable, 
as incomplete and inoperative. It is patentable if it is cap- 
able of separate manufacture and sale. 

Johnson, 1880 C. D. 207, 18 0. G. 1052; Blanchard, 1870 
C. D. 59. 



115 CLAIMS. Rule 37 

A stovepipe elbow made from a blank of sheet iron, having 
a single longitudinal seam and formed without crimping and 
cutting, this presenting a smooth surface of uniform thickness 
throughout when finished. 

Proper. "The stovepipe elbow in question is to be contem- 
plated independent of anv process." 
Lupton, 1874 C. D. 40. 

Packing composed of canvass strips, preliminarily treated 
with bees-wax or other lubricant, followed by rubber solution, 
as described, and then wound spirally in successive, separate, 
concentric layers on a suitable mandrel or form. 

It indirectly indicates its nature by reference to the method 
or methods employed in its construction, instead of directly 
setting out the characteristics of the packing itself. This is 
objectionable because a claim for a manufacture must rest 
upon the novelty of the product without reference to the "art" 
emploved in its construction. 
Mayall, 1873 C. D. 134. 

Reference to the process of manufacture in a claim for an 
article of manufacture is improper. 

Sellers, 1872 C. D. 197, 2 0. G. 246; Aekerson, 1869 C. 
J). 74; Truesdell, 1870 C. D. 123; Designolle, 1878 C. 

B. ]0, 13 0. G. 227; Cobb, 1874 C. D. 60, 5 0. G. 751; 
Lupton, 1874 C. D. 40. 5 0. G. 751: Shalters, 1879 

C. D. 79, 15 0. G. 970. But see Oval Wood Dish Co. 
V. Sandy Creek Mfg. Co., 60 P. E. 285. 

A claim for an article put up for sale is a more convenient 
form sustained. 

Horlick, 1875 C. D. 57; Heide & Wirtz, 1875 C. D. 135, 
8 0. G. 817. 
An applicant for an article of manufacture is not confined 
to one claim. 

Sumner, 1871 C. D. 180, 3 0. G. 19; Adams, 1873- C. D. 

18, 3 0. G. 150. 

If an article is capable of use only in connection with a 

certain machine, if in other words, it is a mere fraction of a 

machine, it can not be claimed separately as an article of 

manufacture. 

Blanchard, 1870 C. D. 59. 
A rolled out column. The process of making did not con- 
fer patentability. 

Sellers, 1872 C. D. 197. 
As the claim is for a car wheel the process of making it, 
that is, the mode of putting the parts together, can not enter 



Rule 37 CLAIMS. 116 

as an element to qualify the character of the manufactured 
article. 

The distinguishing feature of the article seems to have been 
anticipated. 

Truesdell, 1870 C. D. 123. 

(18) Process — Sub-Process. 

"The three steps to be taken are the 'blowing off,' the 
Vashing' and 'refilling' processes. Of course, these may be 
regarded as successive. A structure may have for its purpose 
the accomplishment of either one alone. But the broad pur- 
pose sought to be accomplished does not place any limitation 
upon the endeavors to incorporate the so-called units into a 
single structure, seeking thereby to discharge the various func- 
tions successively and cooperatively." 

Wenstow Co. v. National Boiler, etc., 226 F. E. 954. 

The definitive part of claim 5 refers only to an alleged 
method of producing mechanical motion. It is not contended 
that this method of producing mechanical motion is novel in 
and of itself and the patentability of the method could ac- 
cordingly rest, if at all, only upon the steps by which the 
mechanical motion is utilized for regulating the generator, 
which steps are not set forth in this claim. 
In re Creveling, 117 0. G. 1167. 

The alleged process claims in this case are not patentable in 
view of a prior patent to the same applicant upon the appa- 
ratus disclosed under the particular circumstances of the case. 
In re Creveling, 117 0. C. 1167. 

Where an alleged process claim includes the step of rotating 
an armature and concludes "and by said motion in one direc- 
tion increasing the output of the generator and in the other 
direction decreasing the said output," but it appears that the 
result stated is not accomplished by the mere motion of the 
armature, but by the interposition of a rheostat, held that the 
claim is not patentable since it does not include all of the 
steps necessary to eifect the result stated or any useful result. 
In re Creveling, 1905 C. D. 684, 117 0. G. 1167. 

The mere function of a machine is not patentable and claims 
to it should be rejected; but there seems to be no good reason 
for requiring division betAveen a machine and the mere func- 
tion of that machine. Such a relation argues unity rather 
than diversity of invention. 

Steinmetz, 1905 C. D. 249, ll7 0. G. 901; Frasch, 1905 
C. D. 264, 117 0. G. 1167. 

2. The process of preparing oryphenyltartronic acids which 



117 CLAIMS. Rule 37 

consists in introducing a condensation product of phenol and 
alloxan into alkali solution and heating the whole. 

3. The process of preparing oryphenyltartronic acids which 
consists in introducing a condensation product of phenol and 
alloxan into alkali solution and heating and stirring the whole 
over a water-bath. 

If the only difference between the pair of claims was the 
mere act of stirring it would not be a substantial one. Heat- 
ing at a moderate temperature, i. e., over a water bath is, 
however, a substantial difference and both claims may remain. 
Ex parte Ach, 1901 C. D. 140, 96 0. G. 2411. 

An applicant may properly in one case have claims covering 
the principal or essential steps of his process and other claims 
including those steps together with other specific steps which 
are not absolutely necessary to the performance of the process, 
but which add to its efficiency or make its operation more 
perfect. 

Axnard & Baur, 88 0. G. 1527. 

Claim 1 of the method patent is for a combination and 
describes the operation. 

Edison v. Allis-Chalmers, 191 Fed. E. 841. 

The process is patentable and not the mere function of a 
machine, although but one apparatus is known or suggested 
for carrving the process out. 

Holt, 1894 C. D. 82, 68 0. G. 536. 

Passing upward through falling impurities and flour com- 
mingled, a current of air purified by centrifugal action, then 
subjecting the dust-laden air to centrifugal action, and finally 
passing the air so purified back to be used again in the same 
series of steps, all in closed chambers and conducts, constitute 
a true process. 

Holt, 1894 C. D. 82, 68 0. G. 536. 

Where the separate steps in the process are found separately 
in different patents, but taken with a different effect and in 
necessary relations with another set of operations and in none 
of them as a complete process, these steps, when brought to- 
gether, bear the same relation to one another and to the prior 
art that the few and simple elements of an improved machine 
bear to the many and complicated elements of its precursor. 
Eudd, 1894 C. D. 79, 68 0. G. 535. 

Process. Eunctional claim. 

Williams, 1892 C. D. 213, 61 0. G. 423. 

A mechanical process that is not patentable. 
Jaeger, 1889 C. D. 121, 46 0. G. 1637. 



Rule 37 CLAIMS. 118 

Claim to a mechanical process. 

Young, 1889 C. D. 116, 46 0. G. 1635. (See 1893 C. D. 
214, 1890 C. D. 165-166.) 
To sustain a claim to a mechanical process the steps taken 
must be novel, and some means must be described by which 
the process can be carried on. 

Tyne, 1880 C. D. 2, 17 0. G. 56. 
The question whether a complete process, chemical or me- 
chanical, can be subdivided in an application, and whether, 
when it is so subdivided, a claim for one of the subdivisions 
can be joined with a claim for another, or with a claim for 
the complete process, turns on the question whether such sub- 
division constitute subprocesses, effecting themselves distinct 
results subsidiary to the general result of the entire process. 
Smith, 16 0. G. 630; McDougall, 1880 C. D. 1407; 
Dailey, 1878 C. D. 3, 13 0. G. 228; Wheat, 16 0. G. 
360; Leoser, 76 C. D. 104, 9 0. G-. 837. 
Where the operation of a machine, or series of machines, is 
supplemented by some new method of operation not contem- 
plated in the construction of the machine, and not the in- 
evitable result of its operation, it may amount to a patentable 
process, even though the operation depends necessarily upon 
the machinery. 

Shippen, 1875 C. D. 126, 8 0. G. 727. See Harrison, 
1876 C. D. 170, 10 0. G. 373; Hichs, 1879 C. D. 200, 
16 0. G. 546. 
Claims for what are called mechanical processes are, in the 
majority of instances, objectionable, as they are for the func- 
tion of the machine. 

Case V. Hastings, 1875 C. D. 37, 7 0. G. 557. 

(19) Printed Matter. 

A contract unconnected with any tangible device is not a 
patentable invention. 

In re Moeser, 1906 C. D. 685, 123 G. G. 655. 
The mere duplication of closures is not patentable. 

Seabury, 1903 C. D. 222, 110 0. G. 2013. 
Claims for new arrangements of printed matter on tickets, 
circulars, pads, books, etc., are generally arbitrary in their 
nature, and due entirely to mere fancy, or simple mechanical 
skill, and are not proper subjects for patents. 
Gerson, 1877 C. D. 19, 11 0. G. 244. 

(20) Introductory Clause. 

The real question here is whether it conduces to a clear and 
distinct pointing out of the invention, if the "supporting 



119 CLAIMS. Rule 37 

structure be specified in the form of a preamble sharply sep- 
arated and distinguished from what is the description of the 
real invention. 

Assistant Commissioner Clay in Ex parte Jepson, 243 0. 
G. 525. 
Forsyth v. Garlock, 142 Fed. Eep. 461, although it was a 
case unlike the case at bar in that the preamble stated a use 
and not a supporting structure, yet shows how the preamble 
of a claim is very properly a part of it for the piirpose of 
stating the use which is part of the invention, even though 
it does "not import any structure into the claim. 

Assistant Commissioner Clay in Ex parte Jepson, 243 0. 
G. 525. 
The preamble may be an actual limitation if the real inven- 
tion can not exist apart from it, whereas if the real invention 
does not at all depend upon it, then the preamble is a. mere 
explanatory name and title. (A discussion of the whole mat- 
ter with cases bearing thereon.) 
Jepson, 243 0. G. 525-528. 
While these words have as a matter of law no real effect 
at all upon the claim, still they sometimes signify the draughts- 
man's sense that his terms, while very broad, are to be read 
upon the actual disclosure. 

National Elec. S. Co. v. Tellefunken W. T. Co., 209 F. 
E. 857. 
The introductory clause disregarded and a device held to 
infringe notwithstanding it did not come within this clause. 
Western Electric Co. v. La Eue, 139 U. S. 601. 
The preamble to a claim does not render it patentable. 

Colts Patent Firearms Mfg. Co. v. Wission, 122 F. E. 95. 
The introductory phrase is not an element of the combina- 
tion and does not limit the claim to such apparatus. 

easier, 1899 C. D. 5, 90 0. G. 448. See also Stearns v. 
Eussell, 85 F. E. 218; Colts Patent Firearm Co. v. 
Wesson, 122 F. E. 90-94. 
Where a claim is drawn to cover a mechanical movement and 
that claim is amended by inserting at the beginning of the 
same a descriptive phrase indicating the nature of the machine 
in which the invention is used. Held that the status of the 
claim is not changed by such an amendment. 
Gaily, 1903 C. D. 480, 107 0. G. 1660. 
The introductorv phrase is not an element of the claim. 

easier, 1899 C. D. 5, 90 0. G. 446. 
Where a claim is drawn to cover a mechanical movement 
and that claim is amended by inserting at the beginning of 



Rule 37 CLAIMS. 120 

the same a descriptive phrase indicating the nature of the 
machine in which the invention is used. Held that the status 
of the claim is not changed by such an amendment. 
Gaily, 1902 C. D. 480, 107 0. G. 1660. 

(21) Expression of Degree in Claims. 

It is not possible when dealing with fractional niceties to 
use any safer language else the risk is run of escape from the 
patent by some technical scientific variations. 

Vacuum Clearner Co. v. Am. Ety. Valve Co., 219 0. G. 
587. See also Woerheide v. Johns-Manville, 2T5 F. E. 
604; 220 F. E. 674. 
It is contended that such expressions as ^'sufficient abrupt- 
ness" and '^'arched transversely'' are vague and do not give 
that information to which the public are entitled. 

I can not agree with this contention. It is difficult, if not 
impossible task, to express "sufficient abruptness" and ''^arched 
transversely" in terms of mathematical accuracy. 

Woerheide v. H. W. Johns-Manville Co., 215 F. E. 606. 
Besides being made of this material the shell is to be rela- 
tively to the core inclosed "of such thickness as to give it the 
required rigidity." 

Haskell Golf Ball Co. v. Sporting Goods Sales Co., 210 
0. G. 625. 
The claims in issue require that the gutter be resilient to a 
degree such that the resilience performs some useful function 
in practical use. 

Kawner Mfg. Co. v. Ventwill Store Front Co., 210 Fed. 
E. 459-461. This was said of claims in which the de- 
gree Avas not referred to. 
"As a new article of manufacture, a detachable razor blade 
of such thinness and flexibility as to require external support." 
This seems to be a good claim. 

Clark Blade & Eazor Co. v. Gillette Safetv Eazor Co., 
194 Fed. E. 421. 
The combination, with a water meter having its chamber- 
forming case made relatively strong of an inclosing head 
therefore made relatively weak, whereby to form a yielding 
part against undue interior pressure. Sustained. 

National Meter Co. v. Neptune Meter Co., 122 F. E. 75. 

Of a length which will accomplish the result sought to be 

achieved, and his patent discloses a method for determining 

that length with mathematical exactness, his claim may fairly 

be sustained for the length thus shown, although it might be 



121 CLAIMS. Rule 37 

that some other length covered by the language of the claim, 
but not of the rule, would fall outside the claim. 

Westinghouse Electric & Mfg. Co. v. Orange County Gas 
& Electric Co., 119 F. E. 365 ; Yid. 113 F. E. 884. 
''Equidistant'^ and "approximately'' read into the cfeim in 
view of the function of the machine. 

Krajewski v. Pharr, 105 Fed. Eep. 519. 
"More or less" in claim approved. 

Krajewski v. Pharr, 105 Fed. Eep. 518. 

(22) process, Combination and Article Claims. 

The claims are all limited to the location of the lower reser- 
voir in a deep pit, it adds nothing to their patentability for it 
is purely a structural idea and not a process idea. The cycle 
of operations and the relation of cause and effect in the vari- 
ous step=' ^j. the process are exactly the same, whatever the 
nature of the supports for the water tanks and whatever their 
location relative to a selected part of the earth's surface. 
(Court of Appeals quoting the Commissioner.) 
In re Fessenden, 226 0. G. 1081. 

S. C. IT. S.— Fireball Gas Tank & 111. Co. et al. v. Com- 
mercial Acety. Co. et al., 221 0. G. 1039. 

"Applicants' invention is of that nature where it is difficult 
to express the entire invention by the article and it is difficult 
to express the exact invention by the process." 

In such case both forms of claims should be allowed. 
Kilbourn, Smith and Kilbourn, 221 0. G. 737. 

Whether the invention lies in the apparatus or process is a 
difficult question from which the applicant should not sufEer 
because of a wrong conclusion. 
Edison, 220 0. G. 1373. 

The new process clearly does not make new that which was 
old. 

McNeil Ct. of App., 200 0. G. 583. 

While it is true that a combination of old steps to produce 
a new result amounts to invention, yet in this case, so far as 
we are advised by the record the various steps of the process 
produce but a combination of known results. This is a mere 
aggregation. 

In re Merrill, 199 0. G. 620. 

A claim a decaffinized coffee, the caffein having been re- 
moved after the coffee was roasted, anticipated by coffee from 
which the caffein had been removed before roasting. 

The process was patentable but the product was the same 
thing. 

Eoselius, 162 0. G. 272. 



Rule 37 CLAIMS. * 122 

He did three things, which differentiate his method and 
the product of it, in three steps which are sequential, the 
order of which is essential, and all so dependent on each 
other that none may be omitted without destroying or at 
least failing to obtain the resultant product. 

Farmers Mfg. Co. v. Spruks Mfg. Co., 119 F. E. 597. 

Process and product identical in scope. Cases cited and 
distinguished. 

Trevette, 97 0. G. 1174. 

If the claims contain limitations, whether proper or im- 
proper, which make the alleged process claims indivisible from 
the apparatus claims division can not be required. A mere 
mode of operating apparatus can not be regarded as so unre- 
lated to the apparatus itself that division can be required 
between claims to processes which amount to a mere state- 
ment of the former and claims to the latter. 
Frasch, 117 O. G. 1166. 

The authority and propriety of^ the practice of requiring 
division between inventions found to be independent is too 
well settled T;o require rediscussion here. It is sufficient to 
state that nothing is found in Steinmetz v. Allen, etc., 109 
0. Gr. 549, to make process and apparatus any exception to 
this practice. 

Frasch, 117 0. G. 1166. 

Where the article may be made by other methods then tiie 
process claims should undoubtedly be allowed. 

Kilbourn, Smith, and Kilbourn, 34 0. G. 737. 

(23) Positive Inclusion of Elements of Claims. 

These two elements being separately called for in the 
claims, can not be the same thing, and the drawing-rolls in 
defendant's machine being in practically the same form as 
in the patented machine can not be both the central lower 
gripper and the mechanism for drawing a fold away from it. 
Union Paper Bag Mach. Co. v. Advance Bag Co., 194 
F. E. "138. 
ISTo valid reason is apparent why the actuating mechanism 
and one of its elements may not be independently recited. 
Duncan. Prichard and Macaulev, 134 0.' G. 1307-8. 
Also Iserman, 188 0. G. 807. 
Where claims are clear as to the elements intended to be 
covered thereby, and the structure is such that it can only be 
described with clearness by referring to other parts of the 



123 CLAIMS. Rule 37 

device, there is no objection to wording the claims in this 
wav. Without including such other parts. 
Compos, 183 0. G. 719. 
The rack is itself the second element of the claim, and can 
not therefore be the means of the fourth element. 

General Electric Co. v. Allis-Chalmers Co., 171 P. E. 
668. 
It is well settled that where it is necessary to refer to cer- 
tain elements of an invention in order to locate or define 
other elements they should be positively included in the 
claim. (125 0. G.'665.) ^ 

Stimpson, 160 0. G. 1271. 

(24) Reading Words, Etc., Into. 

Only when necessary to make the claims operative or in 
case of ambiguity apparent on the face of the claims, or 
induced by their study in connection with the specification 
and prior art, is a court permitted to read in an element not 
expressly named therein, in order to narrow a claim, so as to 
make valid one otherwise invalid. 

Crown Cork & Seal Co., etc., v. Sterling Cork Co., 218 
0. G. 875. Examples and cases — When the claim con- 
tained some general term of reference which was ca})- 
able of being so narrowed by interpretation without 
importing an element distinctly foreign. 218 0. G. 
877. 
The intermittency is expressly claimed in most of the 
claims of the patent, and must be read into the others from 
the specification, in order to sustain such claims. 

American Steel & Wire Co. v. Denning Wire & Fence 
Co., 194 F. E. 119. 
Apparently an element read into a claim from the descrip- 
tion of the patent and a device held not to infringe, because 
it did not include such element. 

No disclosure of a device not having this element in the 
specification. 

Edison General Electric Co. v. Crouse-IIinds Electric 
Co., 152 F. E. 437. 

(25) "Whereby Clau.^e" in Claims and Operative 
Environment. 

The mounting has nothing to do with the essential inven- 
tion of the claim, except to provide an operative environ- 
ment and the defendants mounting accomplished the same 
result. Either one is "suitable." 

German v. Youngstown Car Mfg. Co., 191 F. E. 583. 



Rule 37 CLAIMS. 124 

That this "whereby clause" adds nothing to the claim is 
fundamental. It is a statement of asserted result, not of 
method or means of reaching it; and in this instance it is 
but a repetition of the stated "object of the invention" with 
which the application begins, a sort of a Q. E. D. triumph- 
antly affixed to the asserted solution of the problem. 

Electro-Dynamic Co. v. Westinghouse E. & Mfg. Co., 
191 F. "E. 508. 

In the present case the "whereby" clause is so worded that 
it is unpertain whether applicant is depending for the pat- 
entability of the claim upon the structure of the relay as set 
out therein or upon the characteristics of the circuits in 
which the relay is to be placed. To this extent the claim 
is indefinite. 

Hoge, 173 0. G. 1081. 

(26) Concluding Clause in Claim. 

A very full discussion of the meaning of these words in 
a claim. 

National Tube Co. v. Marks, 209 0. G. 329. 
Where the clainls of a patent specify the elements of a 
combiuation, but do not specify the means whereby those ele- 
ments perform their functions, but call for means generally, 
and close with the words substantially and as for the pur- 
pose described or specified, or set forth, such words impart 
into the claims the specific means described in the specifica- 
tion and the claims are limited accordingly. 

Star Bucket Pump Co. v. Butler Mfg. Co., 198 F. E. 
861. See also Union Match Co. v. Diamond Match 
Co., 162 F. E. 148. 
To make the claims valid, in view of the statement of the 
nature and scope of the invention in the specification and 
particularly in. view of the prior art, the words "substantially 
as described'^ must be taken to limit the claims to a struc- 
ture which will accomplish the stated object of the inven- 
tion in substantially the manner described in the invention. 
American Air Co. v. General Compressed A., etc., Co., 
195 Fed. E. 751. 
"The words ^substantially as specified' means substantially 
as specified in regard to the combination which is the sub- 
ject of the claim." Quoted from Lake Shore, etc., E. E. 
Co. V. Car Brake Shoe Co.. 110 W. S. 235 by the court in 
Commercial Acetylene Co. v. Searchlight Gas Co., 197 
Fed. E. 914. 



125 CLAIMS. Rule 37 

The words "as set forth" at the end of the claims, neces- 
sitates reference to the description to ascertain their scope, 
Ellis V. Rochester Egg Carrier Co., 197 Fed. E. 765. 
These words have the eifect of imparting into the claims 
the particulars of the specification relating to the process 
to illustrate its operation, but not the function or operation 
of the mechanism there described. The specification does 
not add to or detract from the claims. The patent can not 
be extended beyond the claims. (Cases.) 

U. S. Consol. S. Eaisin Co. v. Selma Fruit Co., 194 
F. R. 269. 
The claims it will be observed all terminate with the 
statement "substantially as set forth." Although the lan- 
guage of some of them might be construed as covering a 
wider range of devices, it is deemed proper in view of the 
condition of the prior art, to limit the invention to the dis- 
closure of the specification and drawing. 

Friestedt v. National Interlocking Steel Sheeting Co., 
182 0. G. 837. 
Taking the description as given in the claim, it is not at 
all clear what is meant by a "consolidated return curved 
track crossing itself" and standing alone, it is a question 
how far it Avould be good. But the added words "substan- 
tially as described for the purpose set' forth" carry us back 
to the specification. The inventor has thus committed him- 
self to an eliptical form of track. 

Thompson Scenic Ey. Co. v. Chestnut Hill Co., 119 F. 
E. 362. 
Herein described. 

Simonds E. M. Co. v. Hathorn Mfg. Co., 90 F. E. 201 
et seq. 

(27) An Analysis of Claims. 

A claim may be diagrammed by placing its elements in 
separate numbered paragraphs with the qualifying clauses 
adjacent to and indented with reference to that which they 
qualify, thus, claim 1 of Form No. 14 might be diagrammed 
as follows : 

The combination, in a meat-chopping machine, of 

(1) A rotary chopping block 

(a) having an annular rib, with 

(2) a table 

(b) having an annular recess 

(c) to receive said rib, and 



Rule 37 CLAIMS. 126 

(3) a pocket 

(d) communicating with the said recess, 
all substantially as set forth. 

Some courts have treated the qualifying clauses as ele- 
ments, and these qualifying clauses have been lettered. 

"Some of the elements of these claims are Miehle's: such 
of them as indicate H's improvement we have italicised." 
Miehle P. P. Co. v. Whitlock P. P. & M. Co., 323 F. 
R. 684. 
Claim. 

3. In a reversing mechanism a reciprocatency member, 
relatively movable shoes carried thereby to form a guideway, 
a reversing member movable in a circular path and having 
parallel plane hearing-faces, to enter said guideway inter- 
mittently and cooperate with the shoes, means to position the 
hearing-faces of said reversing member to enter the guide- 
wa)'' and means to effect relative movement of the shoes to 
permit the entrance to and departure of the reversing mem- 
ber from the guideway. 

A functional qualification as "Adapted to, etc., treated as 
an element." 

Evans v. Hall Printing P. Co., 223 0. G. 539-541. 
"These thirteen claims may be divided into two groups, 
one relating to the prevention of the shift or change from 
zigzag to straightaway or from straightaway to zigzag stitch- 
ing when the needle is at the wrong stitch, and the other to 
the prevention of the shift from zigzag to straightaway 
stitching, or conversely, when the needle is in the work or 
material to be sewed. 

Union Special Mach. Co. v. Singer Mfg. Co., 215 F. E. 
598-608. 
(1) A rotary member having (a) numerous elongated 
blades, (b) arranged lengthwise in approximately axial direc- 
tion, and (c) in substantially drum form, (d) so as to en- 
close within them a relatively large and practically unob- 
structed intake-chambers, and (e) in transverse section ar- 
ranged relatively to the axis and direction of rotation to 
carry with them rotatively and discharge it tangentially ; and 
(2) a means for so mounting said rotary number as to per- 
mit tangential escape of the fluid discharged from the vanes. 
Sirocco Engineering Co. v. B. T. Sturtevant Co., 208 
F. E. 151. 
Analysis of Claims. 

Conley v. Thomas, 204 Fed. E. 93. 



127 DEAwiNGs. Rule 38 

Analysis of claim. 

Swindell v. Hagen, 198 F. E. 490. 
Claims. Analysis of. 

See Equitable Asphalt M. Co. v. Parker Washington Co., 

197 Fed. 922-923. 

The requisite elements are : ( 1 ) Opposing blades or bars ; 

(2) Having cooperating serrated edges; (3) Means for 

vibrating one or more of the blades or bars to produce the 

feeding action. 

Steiger v. Waite Grass Carpet Co., 194 F. E. 884. 

Rule 38. Reference to Drawings. 

When there are drawings the description shall refer 
to the different views by figures and to the different 
parts by letters or numerals (preferably the latter). 

CONSTRUCTIONS. 

The expressed preference for figures was inserted in 1885. 
If figures are used it is a little confusing to indicate section 
lines by the same kind of figures. Eoman figures have been 
used for this latter purpose and the number selected that 
shall indicate the figure, the section of which is indicated 
thus: Fig. 4 is a section on the line IV — IV figure 1. 

If small letters are used the "caps" may indicate the sec- 
tion lines and that "cap" selected which has a position in the 
alphabet corresponding to the figure the section locus of which 
it indicates. Thus, "Fig. 4 is a section on the line D — D, 
figure 1. Exponents should not be used, but it is sometimes 
convenient to indicate a part as a whole by a letter and its 
constituent parts by the same letter followed by a figure, 
thus a and a2, a3, etc. Corresponding parts in modified 
forms may be indicated in this way. 

A part shown only in dotted lines is sometimes indicated by 
a reference character surrounded by a dotted line. 

If the German rule is followed the drawings can generally 
be reproduced photographically for foreign applications. 

The German Rule. 
Fiir die Bezugszeichen sind die kleinen lateinischen 
Buchstaben (a, b^ c) in einfacher lesbarer Schrift zu ver- 
wenden. Sind mehr als 25 Zeichen notig, so sind arabische 
Ziffern zu verwenden. Zur Bezeichnung von Schnittlinien 
dienen die grossen lateinischen Buchstaben. Winkel sind mit 
kleinen griechischen Buekstaben (a, P, y) zu bezeichnen. 



Rule 39 AERANGEMENT OF SPECIFICATIOISr. 128 

The French Rules. 

8. Les lett'res de reference et le mot Fig. place avant le 
numero de chaque figure, devront etre du type des caracteres 
latins d'imprimerie. Les memes pieces seront designees par 
les memes lettres ou chiffres dans toutes les figures. TJne 
meme lettre on un meme chifire ne pourra pas designer des 
pieces differentes. 

11. Les dessins ne contiendront aucune legende ou indica- 
tion, timbre, signature ou mention d'aucune sorte autre que 
le numero des figures et les lettres ou chiffres de reference, 
dont la hauteur sera de 3 a 8 millimetres. On ne devra em- 
ployer que des caracteres latins. Les Lettres ou chiffres de 
reference, que devront etre de dimensions uniformes et tres 
correctement dessines (1) pourront etre pourvus d'un ex- 
posant, dans des cas exceptionnels. lis seront rejetes en 
dehors des figures et des lignes, auxquelles on les raccordera 
par des attaches. Les lignes de coupe et de raccordement 
seront indiquees par des lettres ou chiffres semblables : 

A A. BB. a a. b b. 11. 3 2. 

Les caracteres grecs pourront etre employes pour designer 
des angles 

The British Rule. 

"Eeference letters and figures and index numerals used in 
conjunction therewith, must be bold, distinct and not less 
than one-eighth of an inch in height. The same' letters 
should be used in different views of the same parts. Where 
reference letters are shown outside the figure, they must be 
connected with the parts referred to by fine lines." (Part 
of Eule 22). 

Rule 39. Arrangement of Specification. 

The following order of arrangement should be ob- 
served in framing the specification: 

{a) Preamble stating the name and residence of the 
applicant and the title of the invention. 

{h) General statement of the object and nature of 
the invention. 

(c) Brief description of the several views of the 
drawings (if the invention admit of such illustration). 



t 



129 AKKANGEMENT OF SPECIFICATIOlSr. Rule 39 

(d) Detailed description. 

(e) Claim or claims. 

(/) Signature of applicant. 

CONSTRUCTIONS. 

212 0. G. 1063. 

(f) As Frank is a common Christian name, an affidavit 
that it is a complete name should not be required. 

Moehn, 106 0. G. 995. 
(f) Middle name may be abbreviated, but first name 
should be written in full. 
Gentry, 1888 C. D. 115. 
See also Smith & Kimble, 97 0. G. 2533. 

(a) While an applicant will be allowed within reasonable 
limits to say what the title of his patent shall be, he has 
not an absolute right in this or any similar matter of detail 
and it is the province of this Office to determine whether 
any title given to an invention is one which satisfies section 
4884 of the Eevised Statutes. 

Mckola, 1891 C. D. 215, 57 0. G. 1425. 

(b) The law and rules contemplate that an applicant 
shall point out at the outset of the specification the par- 
ticular part, machine, article or composition of matter to 
which his invention relates, so that the remainder of the 
specification may be read with reference to some object clearly 
had in view. But that at the outset the applicant shall state 
the exact scope of his invention as he intends to claim it is 
nowhere required, and is inconsistent with law which de- 
clares this to be the object of the claim alone. 

Thompson, 79 C. D. 212, 16 0. G. 588. 
(b) It might not be improper for the Examiner to insist 
upon this statement at the outset, but after the expiration of 
eighteen months spent on the merits of the case, it is un- 
reasonable to insist upon such formal objection. 

Bate, 1879 C. D. 84, 15 0. G. 1012. 
(b) A statement that "The invention consists of the sev- 
eral parts shown in the drawing" seems to be improper. 

Gould, 1876 C. D. 164. 

See also Bate, 1879 C. D. 84, 15 0. G. 1012. 
It is not a presumption of law that a subscribing witness 
has a knowledge of the contents of the document to which 
he attaches his name ; he merely attests the signature of the 
partv, or execution of the deed. 

^Cushman v. Parham, 76 C. D. 130, 9 0. G. 1108. 



Rule 40 SIGNATTJEE. 130 

Doubtless if the patent were actually issued, with but a 
single witness to the specification, or without a petition or 
the payment of fees, these formalities would not avoid the 
patent. 

Atwood, 1869 C. D. 98. 
Sec. 51-6. 

The requirement for two witnesses to the drawing and 
specification was canceled by Act of Congress, March 9, 1915. 
Sec. 212 0. G. 1063. 
(a) Applicant's address at which he customarily receives 
his mail. Care of attorney not sufficient. Object to com- 
municate with applicant direct. Official Notice. 
225 0. G. 375. 
An applicant should be permitted to retain the title he 
thinks appropriate unless there are substantial reasons to the 
contrary. 

Wiland, 152 0. G. 957. 
Omission of address is not such a vital mistake as will 
warrant a refusal to consider application. 
Becker, 1901 C. D. 198, 97 0. G. 1597. 

Rule 40. Signature to Specification. 

The specification must be signed by the inventor or 

one of the persons indicated in Rule 25. Full names 

must be given, and all names must be legibly written. 

Eev. Stat., sec. 4888. 
See notes to Eule 39(f)» 

CONSTRUCTIONS. 

An application can not be received where only one of 
two joint inventors has signed the specification, even where 
the other refuses to sign. 

In re Crane, 106 0. G. 999. 

The words "and attested by two witnesses" struck out of 
the statute by amendment approved March 3, 1915. 
212 0. G. 1063. 

And of course the rule was amended to conform to the 
statute. 

No affidavit required that "Eay" was applicant's full first 
name. 

If an application is returned from the Issue Division for 
correction of alleged informality a ruling by the Primary 
Examiner on the point is conclusive. 
Faulkner, 128 0. G. 886. 



131 SIGNATURE. Rule 40 

Where different forms of the applicant's name appear in 
the preamble and signature to the specification, one of them 
presumably a corruption or nickname, an affidavit should 
be required stating which is the correct form. Where the 
incorrect form appears in the preamble correction should be 
made by amendment. Where the abbreviated form or nick- 
name appears in the signature, the patent may issue after 
the filing of the affidavit above referred to. 
Clark, 124 0. G. 910. Cases reviewed. 
The signature of the applicant by his attorney may be 
admitted. 

Heginbotham, 1875 C. D. 93; Voelter, 1870 C. D. 84. 
There are numerous decisions (Am. & Eng. Encycl. of 
Law, Vol. 21, p. 309) to the effect that the courts will take 
judicial notice of ordinary and commonly used abbreviations 
and equivalents of Christian names. As was stated, however, 
in Ex parte Boston Fountain Pen Company, Supra, the 
cases referred to show that where names have been differently 
written questions have arisen requiring judicial decision and 
it is one of the functions of this Office to prevent such un- 
certainty in connection with instruments which the law au- 
txionzGS it to issuG 

Clark, 124 0. G. 910; Gentry, 1888 C. D. 115; Smith 
and Kimble, 97 0. G. 2533; Boston Fountain Pen 
Co., 116 0. G. 2531. 
In Gentry, 1888 C. D. 115, it was held on the authority 
of Gaines et al. v. Stiles, 14 Peters 322, that the insertion or 
omission of the middle name or initial was immaterial and 
that the full first given name and surname were necessary 
to constitute compliance with the law. 
Clark, 124 0. G. 910. 
"Marie, Princess of Jsenburg" informal but full name may 
be supplied by amendment in substitute paper. 
108 0. G. 2145. 
The name of the applicant must be signed. Charles Prince 
de Lowenstein, is not sufficient. 

In re Charles, Prince de Lowenstein, 108 0. G. 562. 
A signature by another person is not sufficient. 

Taylor, 107 0. G. 1098. 
If first name appears to be an abbreviation an affidavit to 
the contrarv must be filed. 

Smith & Kimble, 1901 C. D. 231, 97 0. G. 2533. 
The application may not be passed to issue until the full 
first name of applicant is supplied. 
Cerdes, 93 0. G. 193. 



Rule 41 JOINDER OF INVENTIONS. 132 

An application must not be passed to issue until the speci- 
fication is signed with the full name of applicant. 
(Order of Commissioner), 92 0. G. 1441. 
A specification and petition signed by both inventor and 
assignee is fatally defective and should not be sent to the 
Primary Examiner. 

Henze, 1899 C. D. 353, 90 0. G. 2507. 
Attestation by two witnesses imperative. 

Ackroyd, 1893 C. D. 58, 63 0. G. 466. 
A clean draft of a specification may not be substituted for 
one altered as to tlie description and signed and sworn to 
by the applicant. Such an application sfiould be stricken 
from the files. 

Sheridan v. Latus, 1883 C. D. 76, 25 0. G. 501. 
A patent granted upon a specification sworn to in blank 
and subsequentl}'- filled out without the inventor having <x 
chance to examine it, is void ah initio. 
Benton, 1882 C. D. 3, 23 0. G. 341. 
It is not a presimiption of law that a subscribing witness 
has a knowledge of the contents of the document to which 
he attaches his name, he merely attests the signature, or 
execution of the deed. 

Cushman v. Parham, 1876 C. B. 130, 9 0. G. 1108. 
Doubtless, if the patent were actually issued, with but a 
single witness to the specification, or without a petition or the 
payment of fees these informalities would not avoid the pat- 
ent. 

Atwood, 1869 C. D. 98. 
Order No. 600 modified so that if an abbreviation is also 
a first name, like "Fred,'' an affidavit need not be furnished. 
Bowen, 247 0. G. 245. 

DIVISION OF APPLICATION. 

Rule 41. Joinder of Inventions. 

Two or more independent inventions can not be 
claimed in one application ; but where several distinct 
inventions are dependent upon each other and mutu- 
ally contribute to produce a single result they may be 
claimed in one application. 



133 JOINDER OP INVENTIONS. Rulc 41 

HISTORY. 

Rule 41, of July 18, 1899, added to the wording of the 
present rule the following paragraph : 

"A machine, a process and a product are separate and inde- 
pendent inventions, and claims for each must be presented 
in a separate application." 

By request, the Patent Law Association of Washington 
carefully considered this rule, witli the above quoted clause 
therein and reported their opinion, with the reasons therefor, 
to the Commissioner. 

Most of our notes are omitted up to 1900, and instead 
thereof is quoted a part of the report as follows : 

Report of the 
PATENT LAW ASSOCIATION 

of "Washington 

On the subject of Rule 41 of July 18, 1899. 

Appendix to Report 

The report notes that Ex parte Boucher, 88 0. G. 545, 
and preceding that, Ex parte Blythe, 30 0. G. 1321, and Ex 
parte Ilorr, 41 0. G. 463, assume that Congress, in the 
statute, section 4886 of the Eevised Statutes, has recognized 
a natural classification of inventions in four great divisions, 
and, after fully giving reasons for a contrary opinion, con- 
clude : 

"We are of the opinion that 'statutory classification' does 
not exist." 

The report then continues as follows: 

V. The Court Opinions and Decisions. 

(Note. — It should be remembered in the discussion of tlie 
court cases that the Supreme Court has held tliat a statutory 
bar may be applied and a patent held invalid, whether the 
bar be formally set up as a (lefense or not. See, for example, 
Hill V. Wooster, 132 U. S. 693-701, citing numerous cases 
where the principle was applied.) 

We think that in the light of the court decisions the ques- 
tion is always one of fact, and that, as a general rule, the 
claims should follow the disclosure — that is, when the disclos- 



Rule 41 JOINDER OF INVENTIONS. 134 

lire of one invention involves or compels the disclosure of 
another, and claims are made for both, they should ordinarily 
be embraced in one application. 

1. The new section of the rule is objectionable because it 
undertakes to convert a supposed rule of law into a rule of 
practice. If the rule is correct as a matter of law, it is 
wholly superfluous, since no rule of practice is necessary to 
enable a rule of law to be enforced. 

3. The rule is objectionable because it casts a cloud upon 
thousands of existing patents which contain claims on a 
plurality of the subjects matter mentioned. The practice and 
adjudications of the Patent Office have an influence upon the 
courts, it sufficing in this connection to cite 

Hogg V. Emerson, 6 Howard 437; Huber v. ISTelson, 148 
U. S. 270. 

The statement of the rule, if permitted to stand, will un- 
questionably be used to fortify contentions against the validity 
of patents, and perhaps with success. Patents, in contraven- 
tion of the principle of the rule, have been granted for over 
a hundred years, and none has been declared invalid for this 
reason. 

3. Although, as just stated, numerous patents obnoxious to 
the principle of the rule have been adjudicated, we have been 
unable to find a single instance of a patent being declared 
invalid for that reason. As late, at least, as 1892, the Supreme 
Court has sustained a patent containing claims for method 
and apparatus. 

Hoyt V. Home, 145 U. S. 302. 

To illustrate the fact that no such rule is recognized by the 
courts or known to the legal profession, let us refer to the 
Bell patent for the telephone (126 U. S.). No patent has 
ever been so sharply criticised and so keenly contested by 
individuals and powerful combinations, including the Govern- 
ment. Eeference is usually made to the fifth claim only, this 
claim was held to be a method or process. But the patent 
has a claim for "a system of telegraphy, one for a combina- 
tion of mechanical parts, two for methods for producing un- 
dulations in a continuous voltaic current," in two somewhat 
different ways, while, as stated, the fifth claim is for "the 
method of and apparatus for," etc. 

We Jiave the statement of the president of the association, 
who was of counsel for the defense, that the question of mis- 
joinder was considered in preparing the attack upon the pat- 
ent, and yet the point was never even raised or suggested in 



135 JOINDER OF INVENTIONS. Rule 41 

court. Though millions of dollars would have freely been 
given to avoid the jpatent, it stood. 

Had any such rule of law existed it would not have escaped 
the attention of bar and bench for a hundred years. 

4. The statement of the rule is not in accordance with the 
opinions and decisions of the Supreme Court. 

In Powder Co. v. Powder Works, 98 U. S. 126-137, the 
Supreme Court discussed two classes of cases. In the case 
before the court the processes described in the original patent 
had no connection with the compounds claimed in the reissued 
patent. The compounds were not made by the process, the 
invention of one did not involve the invention of the other, 
and the two inventions might have been made by different 
persons and at different times, as the court states. In the 
discussion of this matter the court read with approval, as 
applying to the other class, the rule announced by Mr. Justice 
Grier in Goodyear v. E. E. Co., 2 Wall., Jr., 356, and said: 
"The product in Goodyear's invention was the direct result of 
the process. They were parts of one invention and, except in 
imagination, could no more be separated from each other than 
the two sides of a sheet of paper or than a shadow from the 
body that produces it." 

It is hence clear that at least a process and the product may 
constitute one invention, and therefore that whether they do 
constitute one invention or two is a question of fact and not 
of law. The rule is hence objectionable because attempting 
to lay down a rule of law (which is erroneous) instead of 
specifying the character of the facts which must be present 
in order, as a matter of office policy, to Justify the requirement 
of separate applications for such always intimately connected 
siTbjects matter. 

We have carefully examined what we believe to be all of the 
authorities and find none which overrule Powder Co. v. Pow- 
der Works (ubi supra) or which are inconsistent therewith. 

In the appendix will be found a list ol the pertinent Su- 
preme Court cases. 

In these cases the Supreme Court, with substantial uni- 
formity treated the question as one of fact and not of law. 
This may be aptly shown by a comparison of Eubber Co. v. 
Goodyear, 9 Wallace 788, with Mosler Safe Co. v. Hosier & 
Co., 127 U. S. 354. In the earlier case the original Good- 
year patent had been reissued in two divisions, one of which 
claimed the process and the other the product of that process. 
The court below had held the process reissue to be invalid, 
and no appeal from this finding had been taken. It was con- 



Rule 41 JOINDER OF INVENTIONS. 136 

tended before tlie Supreme Court that the product reissue was 
also invalid because the product was the result of the invalid 
process. In disposing of this contention, the court said: "A 
machine may be new, and the product or manufacture pro- 
ceeding from it may be old. In that case the former would 
be patentable and the latter not. The machine may be sub- 
stantially old and the product new. In that event the latter, 
.and not the former, would be patentable; both may be new, 
or both may be old. In the former case, both would be pat- 
entable; in the latter neither. 

"The same remarks apply to processes and their results. 
Patentability may exist as to either, neither, or both, according 
to the fact of novelty, or the opposite. The patentability, or 
the issuing of a patent as to one, in nowise affects the rights 
of the inventor or discoverer in respect to the other. They are 
wholly disconnected and independent facts. Such is the sound 
and necessary construction of the statute." 

It is thus plain, in view of the point which was raised for 
decision, that the patentability of the process and that of the 
product were treated as independent facts, and it was the 
question of fact which was decided. 

In the Mosler case two patents (amongst others) were in- 
volved, one for an article or product and the other for a 
method or process. The article patent was granted July 17, 
1883, on an application filed December 27, 1881. The method 
patent was granted August 14, 1883, on an application filed 
December 11, 1882. In declaring the second patent, for the 
method, invalid, the Supreme Court said: "After a patent 
is granted for an article described as made by causing it to 
pass through a certain method of operation to produce it, as, 
in this case, cutting away the metal and then bending it so 
as to produce the identical article covered by the previous 
patent, which article was described in that patent as pro- 
duced by the method or process sought to be covered by taking 
out the second patent." 

If there be any inconsistency between these two cases, the 
Mosler case, being the later, must control. Eegarding the 
questions im^olved in the two cases as questions of fact, the 
two cases are harmonious. In both cases the questions are 
treated as questions of fact, and in one case the contention 
that the two patents were invalid because granted for the 
same invention was dismissed because contrary to the facts; 
in the second case the later method patent (although concur- 
rently pending) was declared invalid because for the same 
invention as the earlier article patent. 



137 JOINDER OF INVENTIONS, Rule 41 

The present rule is objectionable because it undertakes to 
lay down an incorrect rule of law which compels separate 
applications, although the facts may be such as to require the 
different subjects matter to be embraced in a single patent. 
The present rule would require an inventor, under the cir- 
cumstances involved in the Mosler case, to take out separate 
patents, one of which would necessarily be declared invalid 
by the courts in view of the decision of the Supreme Court 
in the Mosler case. 

The only language which might be thought at first to sup- 
port the rule, so far as we know, in the decisions of the 
Supreme Court, is in the extract above quoted from the case 
of Rubber Co. v. Goodyear. At best, however, this is but a 
dictum, because the court did not there decide that a single 
patent was void because containing different subjects matter, 
but on the contrary, sustained the propriety of reissuing a 
single original patent in two divisions for allied subjects mat- 
ter where the facts showed the subjects matter to be separable. 
This case did not attempt to lay down a rule of law, and if it 
did it is inconsistent with the later cases of Powder Co. v. 
Powder Works, 98 TJ. S. 126, and Mosler Co. v. Mosler & Co., 
1,27 U. S. 154, and the latter must control. 

In other words, the courts have never held a patent invalid 
on the ground of misjoinder, while they have held one of two 
patents invalid where the same disclosure formed the basis of 
both. 

The following citation is strongly suggestive and practically 
presents the attitude of the court on joinder of inventions, 
whether this question has arisen directly or indirectly. 

Merrill v. Yeomans, 94 U. S. 568 : "There is no question 
here but that the patent is good for the second claim, for the 
superheating coil with its steampipe, etc. ; and we are all of 
the opinion that it is good for the process of distillation de- 
scribed in the .specifications, by which the heavy hydrocarbon 
oils are deodorized. It is therefore a valid patent for two 
important matters well set forth and described." 

5. There are a number of cases which at different times 
have been applied as supporting, indirectly, the separation of 
method and apparatus. For example, in Ex parte Blythe, 
Corning v. Burden, McKay v. Dibert, Dederick v. Cassell, 
James v. Campbell, and Piper v. Brown. 

^Ye believe that a critical examination of these citations will 
not only make it apparent that they are not applicable, but, 
furthermore, that they are against the argument of the deci- 
sion. For example, in reference to James v. Campbell, 21 0. 



Rule 41 JOINDEE OF INVENTIONS. 138 

G. 337, no one disputes that machine and process may be inde- 
pendent and distinct, nor is it questioned that a supposed 
process may be but the functional operation of the machine. 
In Tilghman v. Proctor, 19 0. G. 859, the court recognizes 
what no one disputes, that a process may be the subject of 
invention and patent, and that some means for carrying out 
the process should be set forth, so that the public can practice 
it. In Piper v. Brown, 4 Fisher 175, two patents for different 
inventions of different dates were before the court; and under 
Corning v. Burden, 15 How. 267, it is, of' course, apparent 
that A may invent a process, and B an apparatus for carrying 
it out. No one wants them to put both their claims in the 
same patent. 

Because O'Eeilly v. Morse, 15 How. 62, is supposed to indi- 
cate that a patent can issue for but one means of efPecting 
a result, it is not in point. No one is contending for alter- 
native means in the same application, 

A curious citation is that of McKay v. Dibert, 19 0. G. 
1351. In that case a patent was issued for the machine, and 
afterwards one for the process and one for the product. The 
patent for the machine expired and the patents for the process 
and the product were declared valid, and a restraining order 
given against the use of the machine. If this case illustrates 
anything it illustrates an evil that may flow from division. 
Another curious citation is that of Dederick v. Cassell, 20 0. 
G. 1233. In that case several patents to the same individual 
were before the court, in one of which a claim for a process 
was allowed to stand with mechanical claims, and in others 
they were stricken out as being merely functional or old. 

Whatever view may be held of the conclusions in Ex parte 
Blythe, we think a careful reading of the authorities there 
cited will discover the unfortunate nature of the selection. 

After a study of those "authorities" we think it is proper 
to say that the conclusion of Ex parte Blythe becomes nothing 
but a mere assertion. That conclusion is in these words: 
"I am compelled to hold that the plain provisions of the 
statute, as well as the weight of judicial opinion and the dic- 
tates of what seems to me common sense, require that arts 
(or ^processes'), machines (including apparatus), manufac- 
tures and compositions of matter should be made the subject 
of separate and independent patents, except as above indi- 
cated.^' 

We have touched upon the first two reasons. In the mat- 
ter of "common sense" the jury sees it otherwise, and happily 
the exception kills the rule. 



139 JOINDER OP INVENTIONS. Rule 41 

6. The reissue decisions have been "used, though not at the 
present juncture, to support the separation of method and 
apparatus. All those decisions discuss the question of whether 
or not the reissue is for the same invention as the original, 
and whether or not the additions were within the purpose and 
meaning of the original description. So far as they are in 
point they are directly against division, for they recognize 
the necessity of determining as a question of fact whether or 
not the added invention was covered by the original descrip- 
tion. They do not hold it as a fixed rule of law that the mere 
fact that one claim is for a method and the other for an 
apparatus, for example, is sufficient in itself to render the 
patent invalid. 

7. The question of joinder of inventions was directly raised 
in the Fire Extinguisher Case, 21 F. E. 90, and in the case 
of Wilkins Shoe Button Fastener Co. v. Webb et al., 89 F. 
E. 982. 

In the first case method and apparatus were included in 
one patent and the defense that they were not properly joined 
was held not a good defense. 

In the latter case Judge Hammond elaborately reviews the 
authorities, and at page 984, says : 

"I dwell upon these cases because they represent the law of 
the Supreme Court on this important point, as it was declared 
more than 50 years ago, and seemingly has scarcely been 
touched upon since by that tribunal, certainly not departed 
from or modified, so far as I can discover from the cases, 
subsequently. But, incidentally noticing the point, I should 
say, from this reading of them, that to make a patent invalid 
because of duplicity or double invention, the two things pat- 
ented should be not only independent in form or substance, 
physically and structurally, but likewise independent in ob- 
jective results — one to spin cotton and another to make paper, 
as these opinions illustrate the matter. There must be a total 
disconnection between the two, subjectively and objectively, if 
it may be so expressed." 

8. The danger of separate patents for the same invention 
is illustrated, for example, in the well-known cases of Miller 
V. Eagle, 151 U. S. 186, and Underwood v. Gerber, 149 U. 
S. 224. 

The following quotations present the views of two of the 
ablest judges on the bench: 

"The result of this subdivision of the main invention, the 
alteration of specifications, and the grant of divisional patents 
at different dates, was to make an entangled mass of patents. 



Rule 41 JOINDER OF INVENTIONS. 140 

which are to some extent intertwined with each other — a con- 
fusion which lias caused perplexity to experts, counsel, and 
judges, and which has endangered the strength and the valid- 
ity of the patents themselves." — Judges Lacombe and Ship- 
man (C. C. A.) in Electrical Accumulator Co. et al. v. Brush 
Electric Co., 53 F. E. 130, 137. 

"For some unexplained reason (probably because of some 
arbitrary rule of the Patent Office), instead of allowing a 
reissue with appropriate claims, the Office on the same day 
allowed two separate reissues — the one above quoted, and an- 
other, nimibered 10375, which purports to cover practically 
the same invention, only not restricted as to the composition 
of the nonconducting sheets. This practice of so-called 'divi- 
sional issue' has been most unfortunate for patentees. Witness 
the result in Underwood v. Gerber. 149 U. S. 224; 13 Sup. 
Ct. 854. And, as was to be expected, the defendants contend 
that No. 10376 is anticipated by No. 10375. Fortunately, in 
the case at bar it will not be necessary to deprive the inventor 
wholly of Jiis patent because the Patent Office saw fit to split 
it into two." Judare Lacombe in H. W. Johns Mfg. Co. v. 
Eobertson et al., 89"F. E. 504, 506. 

It has been suggested that a new statute might be provided 
which would protect prior patents and at the same time pro- 
vide for the future separation of machine, process and product. 
We believe it to be doiibtful if Congress could justly validate 
an invalid patent, and we believe it to be inexpedient and 
impolitic to put in the statute such a law. We think it too 
strongly suggestive of other bills having in view the interpre- 
tation of patents, and inflexibility where the opposite is desir- 
able. In any event, the passage of the law is yet to be accom- 
plished, and after a careful consideration we are of the opin- 
ion that it would be the duty of this association to oppose to 
the utmost such a bill. 

9. We do not go beyond the court opinions and decisions. 
We do not take the "popular" or "layman" view of joinder 
of inventions. We appreciate the practical advantages of the 
separation of divisions of a machine, and yet we find in cer- 
tain expressions of the legislators a reason for caution in 
pressing too strongly upon the public academic or arbitrary 
rules. For example. Senator Windom, in a speech delivered 
in Congress, December 18, 1878 (see Cong. Eec, 45th Cong., 
vol. 214, p. 269), said: "The object of this amendment is to 
prevent the oppression and great injustice that is being perpe- 
trated upon lumdreds of thousands of innocent people by 
means of the patent law. A common coal stove, I am in- 



141 JOINDER OF INVENTIONS. Rule 41 

formed, is covered by at least twenty patents, almost every 
part of it, and your laws encourage the issue of the largest 
possible number of patents. If, for instance, an applicant 
thinks he has devised a new and useful kind of a stove, and 
that device includes a dozen different contrivances, instead of 
taking a single patent for the whole and getting a patent for 
that kind of a stove, your laws, and this bill, I ' believe, ex- 
pressly provides that he may divide his application into dif- 
ferent patents, giving him the opportunity after they are 
subdivided, to assign one to A, another to B, another to C; 
and then for a single coal stove, which the poor man uses 
upon the prairies to keep his family from freezing, a dozen 
men may sue him for a dozen different royalties." 

The typical argument and illustration of the effect of a 
free rule of joinder is found in the exceptional case of Ses- 
sions V. Eomadka, 28 0. Gr. 731. In that, four articles of 
general applicability were claimed in one patent, showing them 
applied to a trunk. The court evidently did not think them 
"connected in design and operation," and yet did not hold the 
patent void. This case, an extreme one, is in point onlv as 
against the joinder of separate machines or articles of manu- 
facture when they do not "mutually contribute to produce a 
simple result." It is therefore not quoted in the decisions 
separating method and apparatus, or method, apparatus and 
process. 

10. How are machine patents interpreted? As the Su- 
preme Court says, in Machine Company v. Murphy, 97 U. S. 
120, 125, "in the light of what they do, or what office or func- 
tion they perform, and how they perform it." So the dis- 
closure should read to cover the function, and must in many 
cases read to cover the process, and conversely in many cases 
a description of the process must include a description of the 
machine. 

This is always true of process and product. Rarely is one 
separated from the other where the two inventions were made 
by the inventor at the same time. In that class of invention 
the disclosure of one compels the disclosure of the other. 

11. It is universally accepted that patents for a genus and 
a species are valid, and that the separate claims of a patent 
may, in fact must, cover different inventions. 

What difference in effect can there be between a single pat- 
ent covering a process and an apparatus for working that pro- 
cess, and a patent having generic and specific claims? And 
do not process and product bear an even closer relation in 
general than generic and specific claims? 



Rule 41 JOINDER OF INVENTIONS. 142 

There can be no doubt that the generic claim gains strength 
from the specific claim, and so does a process gain strength 
by the disclosure and claiming of the machine, and above all 
does a process gain strength by the disclosure and claiming of 
its alter ego, its products, and vice versa. 

And what is the relation between broad, narrow, and im- 
provement claims? 

And what is the relation between the separate claims of 
some elaborate machine such as a printing press, a typo- 
graphic machine, a voting machine, etc. ? 

18. It has been said by the courts, for example, in Bennet 
V. Fowler, that joinder of inventions is in a measure within 
the discretion of the Commissioner. It is true that this was 
said with reference to different machines; but if this be a 
matter of discretion with the Commissioner, then he should 
not frame a rule of law. The rule as it stood permitted the 
proper exercise of the discretion of the Commissioner; but 
we do not think the statutes or the courts contemplated an 
inflexible rule like the one now in force, made by the officer 
whose duty it is, in our opinion, to exercise that discretion 
in view of the facts of each particular case. 

13. It seems clear, therefore, to us that the rule is unten- 
able as it now stands. We are unable to see that any reason 
of policy exists at the present time whicli should require any 
rule at all upon the subject. It seems to us that each particu- 
lar application should stand on its own basis, and its disposi- 
tion should be determined by the particular facts. 

Without undertaking to lay down an absolute criterion, 
which is impossible, as the peculiarities of all possible cases 
can not be borne in mind, it seems to us that a safe guide 
to follow generally would be to let the question of separation 
depend upon the character of disclosure. 

Assuming novelty and patentability in each instance, if the 
disclosure of one subject matter involves or compels the dis- 
closure of another subject matter, then such siibjects matter 
should be embraced in the same application. For example, if 
a new product has been invented, the statute obliges the in- 
ventor to disclose in full how the product is made. If the 
inventor in so doing discloses a new process, he should be 
permitted to claim it in the same application. 

In other words, the protection should be commensurate with 
the disclosure. If the inventor, in disclosing his new product, 
is obliged at the same time to disclose a new process, there is 
no consideration which he can offer in exchans^e for two 



143 JOINDER OF INVENTIONS. Rule 41 

grants. The public gets all it is entitled to from, the single 
disclosure and obtains no benefit from a second grant. 

14. In our opinion, the court opinions and decisions and 
the illustrations they furnish are against the rule. 

VI. Office Classification. 

In the appendix to this report we have placed a digest of 
the Commissioners' decisions. Those decisions evidence that 
the great majority of the Commissioners treated division as 
a question of fact, especially where method, apparatus, ana 
product were in question. 

1. The average view is expressed in the first division of 
the present rule (41) and, for example, in the following quo- 
tation from Ex parte Dailey, 1878 C. D. 3: 

"The Examiner, in refusing to consider these claims (mode, 
machine and product), followed the letter of the decision re- 
ferred to (Murray v. Wuterich, 1873 C. D. 96), and felt bound 
by that decision; but I think that it has not been the practice 
of the office to adhere so closely to that decision as to make 
it apply indiscriminately to all cases in which processes or 
machines were involved; and I am of the opinion that the 
ends of justice are better subserved by allowing in one patent 
the claims for machines or processes and products, wherever 
their relation is such to each other as not to make it plain 
that they are independent inventions." 

In answer to ^le practical difficulties, Commissioner H. H. 
Duell. in Ex parte Clinton and Knowlton, 1876 C. D. 30, said : 

"The great inconvenience and confusion which the Examiner 
apprehends will arise from this decision may be . obviated, in 
cases like the present one, by the Examiners furnishing to 
other classes duplicate drawings of those parts, which, if made 
the subjects of separate applications, would properly belong 
to such other classes." 

In the report of the Examiners-in-Chief to Commissioner 
Montgomer}^ hereinbefore referred to, they say: 

"Is it any relief to the work of the Office to have two cases 
instead of one, to receive, and enter of record, and inspect, 
and jacket, and stamp, and assign, and enter in the Examiner's 
minutes, and examine, and conduct the correspondence, and 
go through with all the necessary steps and proceedings up to 
final allowance, and to prepare, and sign, and seal, and record, 
and deliver the patents, and make briefs and copies of claims 
for publication, and print, and publish the same? If this 
duplication of the work of the Office be not a saving of labor, 



Rule 41 JOINDER OF INVENTIONS. 144 

what shall we say when, as is frequently the case, a single 
application is divided into a dozen or more?^' 

2. We do not believe the classification of the Office will be 
beiiefited by a continuance of the rule. 

The classification of patents should, we think, be in accord- 
ance with disclosure and not claims. In classifying patents 
the Office should ignore the claims altogether and be guided 
solely by the disclosure made. The practical defects of the 
present classification are mainly due to the fact that the claims 
of a patent control its classification, and its specification is 
largely ignored. In the rare cases where a search through a 
single folio reveals a complete anticipation, the same end can 
be reached by a proper cross-reference. Except in the few 
cases of interferences and reissues, after a patent has been 
issued the Patent Office has no further interest in the claims, 
but it has a very great interest in the disclosures made. 
Bearing this in mind, it will be seen that the application of 
the new rule will be of no benefit to the Office classification. 
If a patent for a product necessarily discloses a new process, 
or if a patent on a new apparatus necessarily discloses a new 
process and a new product, these disclosures, in addition to 
what is claimed, must be recognized in the Office classification 
if it is to be of any value. There is no way of compelling an 
inventor to take out different patents for these allied subjects 
matter, and he might not be able to afford it, even if he should 
desire to do so, and consequently his single patent must be 
put into as many different classes as its disclosures warrant, 
provided the classification is to be accurate. The question of 
Office classification is thus wholly outside of the character of 
the claims in the patents, and the convenience of Office classi- 
fication is not, in our opinion, a sufficient ground for the rule. 

VII. The Fiscal Argument. 

We think that the fiscal argument should not be advanced 
directly against the inventor, nor do we think that the larger 
view at present compels this argument. 

Unfortunately, Congress has not correlated revenues and ap- 
propriations. If the expenses of the Patent Office exceeded 
its receipts, the matter of securing additional fees might be 
of importance, and the reason of the rule might be justified, 
providing it were surfely effective and no better way of in- 
creasing the receipts of the Office could be devised. 

But this condition of affairs does not exist. On the con- 
trary, the Patent Office is a source of profit to the Government. 



145 JOINDER OF INVENTIONS. Rule 41 

There is a large animal surplus, and a total surplus of about 
$5,000,000. If the 6,000 or 7,000 patents, including method 
or apparatus, etc., had been divided, this surplus might have 
been increased by from $40,00 to $60,000. Instead, therefore, 
of being solicitous to increase its fees, the aim of the Office 
should be to either diminish the burden upon inventors or to 
increase its facilities and the boundaries of an application. 
Quoting again from the report of the Examiners-in-Chief : 
"But is it right to rob the inventor merely to get the fees, 
and compel him to take two or more patents where one would 
give him all the evidence of title to the exclusive use of his 
invention contemplated by the constitution and promised him 
by the law? . . . And often from poverty the inventor is 
forced to submit to be shorn of his rights and go before the 
world with a patent which covers only a fraction of his in- 
ventive work, and giving him only questionable protection for 
what it has been allowed to embrace." 

The report then goes on to discuss the practical dangers to 
the public. 

VIII. The Rule as a Finality. 

In Ex parte Boucher the Commissioner, in closing, says : 

"In addition to all the reasons that have been and might 
be adduced in favor of the requirement of division between 
process and apparatus claims, it is self-evident that this ques- 
tion is always going to be an unsettled one unless it is dis- 
posed of by rule." 

Then why not abolish Eule 41 ? 

Or would not the arbitrary rule of not requiring division 
between method, apparatus, and product be as efficient to this 
end ? 

But might not the rule rest on the disclosure, thereby fol- 
lowing the courts, the opinion of the bar, the wishes of the 
applicant, and the natural suggestion of the facts? This 
would at the same time provide the proper safeguard to the 
public of putting in one grant one invention or connected 
inventions, making the claims commensurate with the neces- 
sary disclosure? 

Can the Commissioner expect to settle this by rule? See 
the varying rules in the appendix. It is a matter of recent 
history that one Commissioner prepared and published a 
whole new set of rules, and that the next Commissioner can- 
celed the whole edition and replaced the preceding rules, all 
within five months. 



Rule 41 JOINDER OF INVENTIONS. 146 

It has been suggested that this rule could be given the 
force of law, at the same time protecting previous grants. 

We have very carefully considered this proposal. We are 
doubtful if the validity of prior grants could justly be the 
subject of a statute, and we think it inexpedient to file a bill 
of this sort while we are so strenuously opposing many inter- 
preting bills before Congress. In addition to this, we believe 
that such a law would be hurtful for the reasons we have fully 
set forth; and upon the consideration of the whole matter we 
should deem it our duty to use our utmost endeavor against 
such a bill. 

In the meantime, however, the rule still stands, and even 
if such a law were desirable it might be neither politic nor 
possible to secure its passage. 



IX. Practical Ohjections. 

There are many practical reasons which, in our opinion, far 
outweigh the supposed advantages and "convenience" of the 
present rule. 

1. It seems manifest that the rigid application of the sub- 
stance of the rule would work great hardship upon inventors. 
It would in many instances compel the inventor desiring to 
claim the protection he considered himself entitled to, to take 
out different patents, some of which might be declared invalid 
in the courts, following the decision of the Supreme' Court in 
the Hosier case. 

2. In many cases an inventor could not afford to make 
more than one application, and in such event the rule would 
restrict him to a claim for one subject matter, although in 
disclosing it he would be obliged to disclose other novel sub- 
ject matter. In such case the inventor is obliged to select 
that particular subject matter which for the time being he 
regards as the most important to claim. The rule obliges him 
to disclose the remainder of his invention without correspond- 
ing protection except at onerous additional cost. The inventor 
must either sacrifice a portion of what he is entitled to, or at 
grievous burden to himself, pay out additional fees to in- 
crease the idle surpli^s funds of the Patent Office. 

3. The present rule opens up opportunities for fraud. It 
compels an inventor who has invented a new product, made by 
a new process, which may be the only process by which the 



147 JOINDER OF iNVENTioisrs. Rule 41 

product can be made, to file separate applications. The patent 
granted on either of these applications may be sufficient to 
monopolize the industry built upon the invention. The fact 
that separate applications are on file, each sufficient to support 
the monopoly, would enable the inventor to dispose of both 
applications to different people, since when the patents were 
granted each assignee would be wholly unable to proceed with- 
out the other. 

4. The new rule also opens the door to the grant of patents 
to different inventors on the same invention. For example, 
two inventors may have invented the same new product made 
by the same new process. Neither may be able to afford to 
file independent applications. One in his application may 
claim the process only, while the other may claim the product 
only, although each may disclose the entire subject matter. 
In such event the patents would be granted to both on the 
same disclosure; the Government would have given two grants 
for a single disclosure; the question of priority would — in con- 
travention of the statute — not be determined, and the public 
would, perhaps, be deprived of the use of the invention for 
seventeen years, because neither patentee could proceed with- 
out the consent of the other. 

The same is true of apparatus and process, which are fre- 
quently difficult to distinguish. 

0. We quote from one of the printed briefs referred to 
hereinbefore : 

"There are several important advantages to the public in 
making the claims to a process and to a machine for carrying 
out the process in the same patent, when the two are so in- 
separabh' connected that the use of one involves the use of 
the other; when tlie practice of the process involves the use 
of the machine and the use of the machine involves the prac- 
tice of the process. 

"First. The inventions will necessarily be patented at the 
same time, and both inventions will become public property 
at the same time. If separate patents are granted, this will 
not necessarily be the case. 

"Second. The inventions can not become the property of 
different owners, and the public subjected to the claims of 
different parties. 

"Third. Infringers can not be subjected to different suits 
either by the same or by different plaintiffs, as they may be 
if separate patents are issued. 



Rule 41 JOINDEE OF INVENTIONS. 148 

"Fourth. In case the separate patents were the property of 
different owners, each would be entitled to claim of an in- 
fringer damages or profits for the infringement of his own 
patent, and thus the party would become liable to two par- 
ties for the acts which constituted the infringement. 

"Fifth. Each owner of one of the patents could be pre- 
vented by the other patent from using the invention. 

"Sixth. The owner of the machine patent could not sell a 
machine with the right to practice the process, and the owner 
of the process patent could not grant a right to use the 
process with the right to use the machine, without which the 
process could not be practiced. 

"Seventh. The issue of two patents gives .to unscrupulous 
parties an opportunity to speculate upon the community, by 
offering them for sale separately and with the assurance that 
each guaranteed the right to use the invention without the 
interference of others. 

"Eighth. If the inventions are to be embraced in separate 
patents, they may be sold to different parties before the appli- 
cations are made, and each assignee will have the right to 
adopt such course as he may judge to be for his interest, inde- 
pendently of the other. One may file his application at once; 
the other may have justifiable reasons for delaying as long as 
the law allows. They may both be put into interference with 
other parties, and each be entitled to take evidence and be 
heard. Increased expense and delay will arise from this dupli- 
cation of the parties, and additional labor to the Office, 

"Ninth. Even if the two patents were allowed on the same 
day, the final fee for one might be paid at once and the party 
would be entitled to the issue of the patent. The party en- 
titled to the otlier patent might, for the purpose of securing 
foreign patents, or for other reasons, delay the pa^'ment of the 
final fee to the end of the limit allowed by law. The Office 
could not justly delay the issue of one patent or hasten the 
issue of the other. 

"Tenth. After the issue of one of the patents, the public, 
having no knowledge of the pendency of the other, might ac- 
quire rights under it by the purchase of machines, for instance, 
which they would have no right to use after the other patent 
was issued to another party." 

All that has been thus stated applies with even greater 
force to process and product. 



149 JOINDER OF INVENTIONS. Rule 41 

APPEJsTDIX TO EEPOKT. 

A. 

DIVISIONAL APPLICATIONS. 

Patent Office Rules. 

Prior to 1855 there appears to have been no specific Patent 
Office rule governing divisional applications. Applicants were 
allowed to claim as many different inventions as they pleased 
under one patent, and such patents were sustained by the 
courts. 

Evans v. Eaton. 1 Eobb. 68 ; Evans v. Jordon, 3 Wheaton 
454. 
were cases relating to a patent granted prior to 1836, covering 
claims to several distinct machines relating to the art of man- 
ufacturing flour. 

Typical cases subsequent to the act of 1836 were those of 
'Wyeth V. Stone, 2 Eobb. 23, 1840; Hogg v. Emerson, 6 
How. 437, 1848; Hogg v. Emerson, 11 How. 587, 1850. 

The first provision on the subject of divisional applications 
is found in the Patent Office rules of 1855, as follows : 

"11. Two or more separate machines will not be allowed 
to be the subject of one patent whatever be the purpose for 
which used." 

"This is intended to change the practice of the Office in 
those respects wherein in certain cases all the machines used 
in the manufacture of one article are allowed to be claimed in 
one application." 

This rule apparently continued in force until 1859, when it 
was changed to read as follows : 

"11. Two or more separate machines will not be allowed 
to be the subject of one patent unless connected in their de- 
sign and operation." 

This apparently implies that a patent would be allowed 
covering two or more separate machines if connected in design 
and operation. 

In 1863 this rule was changed to read as follows: 

"12. Two or more distinct inventions should not be claimed 
under one application for letters patent. 

"ISTo positive rules for guidance can be laid down on this 
point, but in general where there are several parts or elements 
of a machine, art, process, manufacture or composition of 
matter having no necessary or dependent connection with each 
other, and each susceptible of separate use or application either 



Rule 41 JOINDER OF INVENTIONS. 150 

by itself or in other connections, all set forth and claimed 
under one application for letters patent, the Office requires 
the party to divide the application and confine the claim to 
whichever invention he may elect." 

This was changed in 1866 to read as follows: 

"12. Two or more distinct and separate inventions may 
not be claimed in one application; but where several inven- 
tions have a necessary and dependent connection with each 
other so that all cooperate in attaining the end which is sought, 
they may be claimed." 

"13. If more than one invention is claimed in a single 
application, and they are found to be such that a single patent 
may not be issued to cover the whole, the Office requires the 
inventor to divide the claim and confine the invention to 
whichever he may elect." 

In 1870, Eule 12 was changed as follows: 

"12. Two or more distinct and separate inventions may not 
be claimed in one application; but where several inventions 
are necessarily connected each with the other they may be so 
claimed." 

In 1871, Eule 12 remained unchanged, save that it became 
Eule 15, and Eule 13 was changed as follows : 

"16. If more than one invention is claimed in a single 
application, and they are found to be of such a nature that a 
single patent may not be issued to cover the whole, the Office 
may require the inventor to confine the description and claim 
of the pending application to whichever invention he may 
elect. 

"The other inventions may be made the subject of separate 
applications." 

In 1876, Eule 12 was changed as follows: 

"15. Two or more separate and independent inventions can 
not be claimed in one application, but where several distinct 
inventions are dependent upon each other and mutually con- 
tribute to produce the new result, they may be so claimed." 

This rule remained unchanged until 1885, except that in 
the revised edition of 1879 it was numbered 40. 

"41. If several inventions claimed in a single application 
shall be found to be of such a nature that a single patent may 
not be issued to cover them, the inventor will be required to 
limit the description and claim of the pending application to 
whichever invention he may elect; the other inventions may be 
made the subject of separate applications which must conform 
to the rules applicable to original applications. 

"If the independence of the inventions be clear such limita- 



151 joiNDEE OF iisrvENTioNs. Rule 41 

tions will be made before any action i;pon the merits ; other- 
wise it may be made at any time before final action thereon, 
in the discretion of the Examiner. 

"42. When an applicant make two or more applications 
relating to the same subject matter of invention, all showing 
but only one claiming the same thing, those not claiming it 
must contain disclaimers thereof with references to the appli- 
cation claiming it." 

In 1885 the following addition was made to Eule 40 : 

"An application should not ordinarily embrace matters be- 
longing to distinct official classes, nor matters belonging to dis- 
tinct subclasses in cases where a contrary practice has hereto- 
fore prevailed among applicants." 

This paragraph was canceled in 1886. 

In 1888 the numbers of the above rules were changed to 
"41, 43 and 43" respectively, and the following rule was 
added : 

"44. A reservation for a future application of subject mat- 
ter disclosed but not claimed in a pending application, but 
which subject matter might be claimed therein, will not be 
permitted in the pending application." 

These rules remained substantially unaltered until 1897, 
when the following addition was made to Eule 41 : 

"A machine, a process and a product are separate and inde- 
pendent inventions, and claims for each must be presented in 
a separate application." 

B. 

The following pertinent Supreme Court cases have been 
particularly considered : 

(1) Evans v. Eaton, 3 Wheaton 454; (2) Hogg v. Emer- 
son, 6 Howard 437; (3) Hogg v. Emerson. 11 Howard 
587; (4) Le Eoy v. Tatham, 14 Howard 156; (5) 
O'Eeilly v. Morse, 15 Howard 62; (6) Corning v. Bur- 
den, 15 Howard 252; (7) Bennett v. Fowler, 8 Wal- 
lace 445; (8) Eubber Co. v. Goodvear, 9 Wallace 788; 
(9) Clark v. Bousfield, 10 Wallace 133; (10) Du Bois 
V. Eailroad, 12 Wallace 47; (11) Mowry v. Whitney, 
14 W^allace 424; (12) Wood Paper Patent, 23 Wallace 
566; (13) Merrill v. Yeomans, 94 H. S. 568; (14) 
Cochrane v. Deener, 94 tJ. S. 780; (15) Keystone 
Bridge Co. v. Phoenix Iron Co., 95 U. S. 274; (16) 
Bates V. Coe, 98 H. S. 31; (17) Powder Co. v. Pow- 
der Works, 98 U. S. 126; (18) Parks v. Booth, 102 U. 
S. 96; (19) Tilghman v. Proctor, 102 U. S. 707; (20) 



Rule 41 joiisrDER of inventions. 152 

James v. Campbell, 104 U. S. 356; (31) Heald v. 
Eice, 104 U. S. 737; (22) Wing v. Anthony, 106 U. 
S. 142; (23) Cochrane v. Badische, etc., Ill U. S. 
293; (24) Western Electric Co. v. Ansonia Co., 114 
U. S. 447; (25) Eachus v. Broomall, 115 U. S. 429; 
(26) Grier v. Wilt, 120 TJ. S. 412; (27) New Process 
Co. V. Mans, 122 U. S. 413; (28) Smith v. Sprague, 
123 U. S. 249; (29) Lawther v. Hamilton, 124 U. S. 
1; (30) Dryfoos v. Wiese, 124 U. S. 32 ; (31) Andrews 
V. Hovey, 124 U. S. 694; (32) The Telephone Cases, 

126 U. S. 1; (33) Hosier Safe Co. v. Hosier & Co., 

127 F. S. 354; (34) Crescent Brewing Co. v. Gott- 
fried, 128 U. S. 158; (35) Bene v. Jeantet, 129 TJ. S.. 
683; (36) Burt v. Evory, 122 TJ. S. 349; (37) Com- 
mercial Co. V. Canning Co., 136 U. S. 176; (38) Grant 
V. Walter, 148 TJ. S. 547; (39) Underwood v. Gerber, 
149 U. S. 224; (40) Leggett v. Standard Oil Co., 149 
TJ. S. 287; (41) Brigham v. Coffin, 149 TJ. S. 557; 
(42) Hiller v. Eagle, 151 U. S. 186; (43) Eisdon v. 
Hedart, 158 U. S. 68. 

In addition to these cases, see cases cited Tinder heading 
"The Court Opinions and Decisions" in body of. report. 

C. 

DECISIONS OF THE COMMISSIONER OF PATENTS 

TOUCHING UPON DIVISION OF APPLICATIONS. 

1869-1899. 

Collated from a Digest Prepared hy Wm. D. Baldwin, Esq. 

Between two or more devices or processes. 

Between apparatus or machine and process or method. 

Between apparatus or machine and product. 

Between process or method and product. 

Between genus and species. 

Between compositions of matter. 

Between designs. 

Questions of practice. 

BETWEEN TWO OK MORE DEVICES OR PROCESSES. 

Yale, 1869 C. D. 110. 
Cited in numerous cases. 
It is within the discretion of the Commissioner whether an 
application shall be divided. 

Two or more inventions which are capable of division, and 



153 JOINDER OF INVENTIONS. Rule 41 

belong to different classes, or involve a double labor of exami- 
nation, or which have no community- of operation, should be 
presented in ditferent applications. 

Lehmann, 1870 C. D. 70; Sumner, 1871 C. D. 180; 
Combs, 1871 CD. 209; Shepard, 1873 C. D. 244; 
Adams, 1873 C. D. 18; Stow, 1873 C. D. 30; Frank- 
lin, 1873 C. D. 116; Nichols, 1873 C. D. 118; Barker 
& Mack, 1873 C. D. 123; Lones et al., 1873 C. D. 165; 
Eice, 1874 C. D. 44; Birun, 1874 C. D. 52; Westen- 
haven & Adair, 1874 C. D. 58; Tucker, 1874 C. D. 97; 
Knott, 1875 C. D. 96; Noyes, 1875 C. D. 105. 
Where the subject matter of an application consisted of a 
set of devices for charging cartridge-cases, and the first claim 
was for a cartridge-shell holder, and the second for a can- 
ister. Held that as the devices covered by these claims were 
in their operation especially adapted to each other, belonged to 
the same class of inventions, and were used in connection to 
subserve a common end, they formed an exception to the gen- 
eral rule that separate inventions should form the subject of 
separate applications. 

The third claim was for the combination of the shell- 
holder, the canister and a ramming device. As these also were 
especially adapted to each other, all cooperated to produce a 
certain result, and the use of each was necessary to that re- 
sult. Held that they constituted a legitimate combination. 
Jopling, 1875 C. D. 153; Clinton & Knowlton, 1876 C. 
D. 30, 9 0. G. 249; Sergeant, 1876 C. D. 101, 9 0. G. 
963; Sobinski, 1876 C. J). 161, 10 0. G. 3; Kuh, 1876 
C. t). 190, 10 0. G. 587; Gillies, 1876 C. D. 195, 10 
0. G. 415; Westcott, 1876 C. D. 206, 10 0. G. 546; 
Dieterich, 1877 C. D. 14, 11 0. G. 195; Pintsch. 1877 

C. D. 43, 11 0. G. 597; Law, 1877 C. D. 119, 12 0. 
G. 940 ; Elbers, 1877 C. D. 123 ; Hamilton. 1878 C. D. 
16. 13 0. G. 122; Bigelow, 1878 C. D. 65, 13 0. G. 
913; Cardwell, 1878 C. D. 124, 15 0. G. 293; Gokey, 
1878 C. D. 144, 15 0. G. 295; Sargent, 1879 C. D. 14, 
15 0. G. 512; Andrews, 1879 C. D. 99, 16 0. G. 1056; 
Smith, 1879 C. D. 216, 16 0. G. 630; David, 1879 C. 

D. 310. 16 0. G. 1139; Preston, 1880 C. D. 125, 17 0. 
G. 853; Holub et al., 1880 C. D. 127, 17 0. G. 854; 
McDougall, 1880 C. D. 147, 18 0. G. 130; Van Mat- 
teson, 1883 C. D. 52, 24 0. G. 389; Martin,- 1883 C. 
D. 79, 25 0. G. 502 ; Mefford, 1883 C. D. 95, 25 0. G. 
881: Holt, 1884 C. D. 43, 29 0. G. 174. Leading case, 
cites many court cases. 



Rule 41 JOIISTDEE OF INVENTIONS. 154 

Applications for letters patent are to be divided only upon 
lines drawn between separable and distinct parts of the thing 
invented. No invention can be divided upon an imaginary 
line, one determined by a mere difference in words, as by the 
relative breadth of claims to identical subject matter — that is, 
upon a distinction of scope, not of substance, of the mind, not 
of matter. Divisional applications which relate to the same 
machine or structure and contain claims to the constituent 
parts thereof which interweave with each other or overlap one 
'another, are improper. 

Overruled in Drawbaugh, 64 0. G. 155. 
Eoberts, 1887 C. D. 61, 40 0. G. 573; Sartell, 42 0. G. 
295, 1888 C. D. 10; Maxim, 1888 C. D. 126, 43 0. G. 
506; Simonds, 1888 C. D. 89, 44 0. G. 449; Gillette, 
1888 C. D. 107, 44 0. G. 819 ; Willcox & Borton, 1888 
C. D. 144, 45 0. G. 455; Bullard, 1888 C. D. 169, 45 
0. G. 1569; Coe, 1889 C. D. 191, 48 0. G. 119; 
Jljinsky, 1889 C. D. 192, 48 0. G. 1399; Stearnes, 
1890 C. D. 49, 50 0. G. 1768; Woodward. 1890 C. D. 
169, 53 0. G. 1090; Speckbauch, 1891 C. D. 36, 54 0. 
G. 1265; Sawn, 1891 C. D. 44, 54 0. G. 1561; Stein- 
hilber, 1891 C. D. 336, 57 0. G. 1720; Hine, 1892 C. 

B. 11, 58 0. G. 385; Kerr, 1892 C. D. 61, 58 0. G. 
1553. 

"Although it appears that certain claims in an application 
are for a mechanism capable of use in other relations than 
that which forms the specific subject matter of the application, 
division will not be required if these claims have elements in 
common with the more specific claims of the application." 
Wendell, 1892 C. D. 95, 59 0. G. 530; Connelly, 1892 

C. D. 102, 59 0. G. 787; Hunter, 1892 C. D. 149, 60 
0. G. 295; Learned, 1893 C. D. 84, 63 0. G. 1962; 
KorfE, 1894 C. D. 11, 64 0. G. 653; Olan, 1897 C. D. 
24, 79 0. G. 861; Burgess, 1897 C. D. 64, 80 0. G. 861. 

"Tt does not follow because the courts would not hold a 
patent invalid that it is the duty of the Patent Office to allow 
more than one invention to be claimed in the same application. 
Whether a given invention or improvement shall be embraced 
in one, two, or more patents is a matter about which some 
discretion must be left with the head of the Patent Office. 

"The time arrived long since when a proper classification in 
the Patent Office, so as to facilitate examination and prevent 
mistakes in the granting of patents, requires that improve- 
ments on an old machine having a distinct status in the arts 



155 JOINDER OF INVENTIONS. Rule 41 

and classified separately in this office should be presented in 
separate applications." 

Williams, 1898 C. D. 76, 83 0. G. 1346. 
Division required where two devices are independent and do 
not mutually contribute to produce a single result, and the 
action of one does not in any manner change or affect the 
action of the other. 

Lawrence. 1898 C. D. 142, 84 0. G. 1141; Healey, 1898 
C. D. 157, 84 0. G. 1281. 
Separate parts of a bicycle distinct and independent in- 
ventions requiring divisional applications. 

Moore, 1898 C. D. 214, 85 0. G. 152 ; Crowell, 1898 C. D. 
219, 85 0. G. 289; Matthews, 1898 C. D. 34, 85 0. G. 
1691; Eichter, 1898 C. D. 274, 85 0. G. 1908; Eap- 
pleye, 1898 C. D. 289, 85 0. G. 2096 ; Oxnard & Baur, 
88 0. G. 1526; Eouse, 88 0. G. 2242. 

BETWEEN APPARATUS OR MACHINE AND PROCESS OR METHOD. 

Lowe, 1870 C. D. 39. 

Shippen, 1875 C. D. 126, 8 0. G. 727. 
Each part of this series of machines without the others, or 
some equivalents of the others, would be absolutely useless, 
and since the invention lies mainly in the series as a com- 
plete set, and not in an improvement upon separate parts of 
an old set, they ought to be allowed in one application, and 
in one only. 

Elbers, 1877 C. D. 55, 12 0. G. 2; Dailey, 1878 C. D. 3, 
13 0. G. 228; Cobb, 1879 C. D. 123, 16 0. G. 175; 
Holub et al., 1880 C. D. 127, 17 0. G. 854; Holt, 1884 
C. D. 43, 29 0. G. 174; Blythe, 1885 C. D. 82, 30 0. 
G. 1321. 

Important Case. 

The plain provisions of the statute, as well as the weight 
of Judicial opinion and the dictates of what seems to be com- 
mon sense, require that "arts" (or processes), "machines" 
(including apparatus), "manufactures" (articles), and "com- 
positions of matter" should be made the subjects of separate 
and independent patents, except as indicated. 

The exceptions are (1) when the product is entirely new, 
and hence the process also; (2) when the exercise of the 
process would produce no other product, and when the product 
could be nroduced by no other process. 
Young, 1885 C. D. 108, 33 0. G. 1390. 



Rule 41 JOINDEE OF INVENTIONS. 156 

The statute does not forbid the joinder in one patent of 
claims for method and apparatus. 

If an applicant comes to the Office alleging a "unitary in- 
vention consisting of the process and the product thereof," 
which are shown to be novel and useful and are "in their 
nature and operation connected together/' such invention may 
be and ordinarily should be included in one patent. Over- 
rules Blvthe, 1885 C. D. 82. 

Herr, 1887 C. D. 105, 41 0. G. 463. 
Eeaffirms Ex parte Blythe as to "statutory classes" of in- 
^vention. The method is wholly and entirely separate and dis- 
tinct from the machine. This has been se1;tled by the very 
highest authority. 

Simonds, 1888 C. D. 78, 44 0. G. 445; Tainter, 1889 C. 
D. 133, 47 0. 0. 135. 

Important Case. 

"While there is no express provision of the statute limiting 
or controlling the discretion of the Commissioner in embracing 
more than one invention in the same letters patent, and the 
courts would not for that reason declare such a patent void, 
the statute does prohibit the introduction into reissue patents 
of new matter or other invention than that covered by the 
original patent. The Supreme Court has held that under this 
prohibition no new matter could be introduced; that process 
and apparatus are separate and distinct inventions, and that 
when a patent for one has issued, although the other was dis- 
tinctly shown, a reissue for both could not be maintained. 
(Burr V. Duryee, 1 Wall, 531; James v. Campbell, 104 U. S. 
356; Powder Co. v. Powder Works, 98 U. S. 126; Heald v. 
Eice, 104 U. S. 737.) 

"The opposite conclusion has been reached in regard to 
process and product when both were new and the process could 
produce no other product and the product could be made by 
no other process. This conclusion is based upon the premise 
that such process and product constitute one single invention. 
It must be deemed settled by the highest authority that such 
processes and products are not separate and distinct, but uni- 
tary inventions, and that the process and product may be 
regarded and claimed as parts of such invention, much as dif- 
ferent elements in a combination may be separately claimed. 
This conclusion finds satisfactory support in the nature of the 
invention itself, as well as in the character of legal property 
residing in it. 

"This conclusion excludes all other cases of process and 



157 JOINDER OF INVENTIONS. Rule 41 

product, such as when either process or product is not new, 
or when the product can be made by some other process or 
the process will produce some other product." 

McMahan, 1889 C. D. 169, 48 0. G. 255; Lord, 1890 C. 
D. 16, 50 0. G. 987. 
"Although a process and an apparatus for carrying out the 
process are separate inventions, they are not necessarily inde- 
pendent inventions within the meaning of Eule 41, and when 
they are dependent upon each other and mutually contribute 
to produce a single result they may be joined in one applica- 
tion. 

"Eule 41 does not require that in order to authorize a sin- 
gle patent for several distinct inventions which mutually con- 
tribute to a single result there must be such intimacy of inter- 
connection and cooperation as to result in a third invention 
or combination. 

"Perhaps a good working rule would be that process and 
apparatus are presumptively connected in design and operation 
where the examination of both belongs to the same division of 
the Office." 

Norwood, 1890 C. D. 29, 50 0. G. 1129; Hyde, 1890 C. 
D. 41, 50 0. G. 1293; Chambers, 1890 C. D. 101, 51 
0. G. 1943. 
"When an application containing claims for a process and a 
described apparatus for practicing the process has been divided 
in compliance with the requirements of the Office, and patent 
thereafter issues for the apparatus, the Examiner is not war- 
ranted in subsequently rejecting the application for the process 
on the ground that the patent for the apparatus disclosed and 
covered the process. Such action is in effect a reversal of his 
decision, requiring division, and if his present action be cor- 
rect division should not have been required." 

Lillie, 1890 C. D. 181, 53 0. G. 2041; Forbes v. Thom- 
son, 1890 C. D. 185, 53 0. G. 2042; Hopkinson, 1891 
C. D. 4, 54 0. G. 264; Perkins, 1891 C.'D. 63, 55 0. 
G. 139; Curtis, 1891 C. J). 206, 57 0. G. 1128. 
"Division of an application as between claims for apparatus 
and claims for process is unnecessary where no wider range 
of search is required for the two than for the one." 

Kerr, 1892 C. D. 61, 58 0. G. 1553; Hafely & Eediefson, 
1893 C. D. 94, 64 0. G. 559; Tymeson & Borland, 
1898 C. D. 48, 83 0. G. 503. 
A woven fabric, a process of producing the fabric and wind- 
ing yarn, an apparatus for winding yarn on the spool, and a 
yarn spool or bark spool are each separate and independent 



E-Tlle 41 JOINDER OF INVENTIONS. 158 

inventions and should form the subject of separate applica- 
tions. 

Boucher, 88 0. G. 545. 

Leading Case. 

Process and apparatus are separate and independent inven- 
tions and claims covering both should not be joined in the 
same application. 

Decision based upon the "statutory classification" elaborated 
in Ex parte Blythe; on the recognition by the courts of these 
different classes of invention; on the increased revenue to the 
office from separate applications; on the requirements of the 
examining system; on the belief that the time has come to 
establish stability of practice on this question. 

BETWEEN" APPAEATUS OR MACHINE AND PRODUCT. 

Murray & Wuterich, 1873 C. D. 96. 
A claim for a machine and a claim for the product of the 
machine will not be allowed in the same application. Each 
must be presented in a separate application for a distinct 
patent. 

Lupton, 1874 C. D. 40; Chamberlin, 1874 C. D. Ill; 
Junker & Wolf, 1877 C. D. 10, 11 0. G. 110; Elbers, 
1877 0. D. 55, 12 0. G. 2; Dailey, 1878 C. D. 3, 13 
0. G. 228; Cobb, 1879 C. D. 123, 16 0. G. 175; Win- 
therlich, 1879 C. D. 171, 1 0. G. 404; Wintherlich et 
al.. 1879 C. D. 240, 16 0. G. 808; Tyne, 1880 C. D. 
2, 17 0. G. 56 ; Bancroft & Thome, 1881 C. D. 55, 20 
0. G. 1893; Holt, 1884 C. D. 43, 29 0. G. 174; Hafely 
& Redlefsen, 1893 C. D. 94, 64 0. G. 559. 

BETWEEN PROCESS OR METHOD AND PRODUCT. 

Stow, 1873 C. D. 30; Mayall, 1873 C. D. 134; Lupton, 
1874 C. D. 40; Elbers, 1877 C. D. 55, 12 0. G. 2; 
Arkell, 1877 C. D. 73, 11 0. G. 1111; Dailey, 1878 

C. D. 3, 13 0. G. 228; Cow, 1879 C. D. 123, 16 0. G. 
175; Du Motay et al., 1879 C. D. 269, 16 0. G. 1002; 
O'Neill, 1879 C. D. 290, 16 0. G. 1049; Holt, 1884 C. 

D. 43, 29 0. G. 174; Pastor Perez de la Sala, 1888 C. 
C. 3, 42 0. G. 95; Simonds, 1888 C. D. 78, 44 0. G. 
445; Tainter, 1889 C. D. 133, 47 0. G. 135; Fefel, 
1891 C. D. 176, 57 0. G. 409; Greenfield, 1892 C. D. 
5, 58 0. G. 274; Hines, 1892 C. D. 164, 60 0. G. 576; 
Hafely & Eedlefsen, 1893 C. D. 94, 64 0. G. 559; 
DemeW, 1893 C. D. 125, 64 0. G. 1649. 



159 JOINDER OF INVENTIONS. Rljle 41 

"Within the limits of validity of the grant claims for dis- 
tinct but dependent inventions may be joined in the same 
application or be made in separate applications, at the option 
of the applicant. This general rule leaves to the discretion 
of the Office the requirement of division in those exceptional 
cases in which the inconvenience resulting from a single appli- 
cation amounts to the necessity to divide, and leaves room, 
also, for the exercise of that inherent discretion necessarily 
left on this subject to the Office (Bennett v. Eowler, 8 Wall. 
445." 

Kny, 1893 C. D. 131, 65 0. G. 1403; Thomson, 1894 
C. D. 8, 66 0. G. 653. 

'^'Where a process and its product are claimed in one appli- 
cation the Office vt^ill not concern itself with the inquiry 
whether the article might be made by any other process or 
whether the process will necessarily result in the particular 
product for the purpose of determining whether division should 
be ordered between process and product. 

"Process and its product concern inventions which are so 
related that they may, at the option of the applicant, be placed 
in the same application, he taking all the risks of future diffi- 
culties in the courts, and it is generally thought to be the 
better practice to include them both in one application, since 
division between process and product may produce confusion 
in the arts and conflicting interests, as intimated by the court 
in McKay v. Dibert (C. D. 1881, 338; 19 0. G. 1351; 5 Fed. 
Eep. 587), since no patent has been declared void by reason 
of the joinder of such claims, while many have been held to 
be valid, since manifest advantages would follow from one 
uniform rule as to division, and more important than all else, 
since division or joinder approaches, if it does not present, a 
question of right in the applicant to choose between two 
courses, both of which are open to him, it is broadly an- 
nounced that division in such cases will not be required." 
Tymeson & Borland, 1898 C. D. 48, 83 0. G. 503. 

BETWEEN GENUS AND SPECIES. 

Atwood, 1869 C. D. 98. 

It belongs to the Commissioner to determine whether a 
patent shall cover more than one invention or whether all the 
inventions or parts of an invention described in an application 
shall be included in one patent or several. 

The case of the Suffolk Co. v. Hayden in no way controls 
the practice of the Patent Office. 



Rule 41 JOINDER OF INVENTIONS. 160 

Every new device described in an application should be 
patented under it or under a division of it. 

Cited in Numerous Cases. 

Eagle, 1870 C. D. 138. 
Genus and species. Can not claim two species in same 
application. 

Bogart, 1876 C. D. 163; Howland, 1877 C. D. 120; Du 
Motav et al.. 1879 C. D. 269, 16 0. G. 1002; Freese, 
1890*0. D. 133, 17 0. G. 1095; Smith, 1888 C. D. 131, 
44 0. G. 1183; Neiswanffer, 1890 C. D. 37, 50 0. G. 
1132; Oxnard & Baur, 88^0. G. 1526. 

BETWEEN COMPOSITIONS OF MATTEE. 

Loeser, 1876 C. D. 104, 9 0. G. 837 ; Lippincott, 1879 
C. D. 212, 16 0. G. 632; Hentz, 1884 C. D. 6, 26 0. 
G. 437. ■ 

BETWEEN DESIGNS. 

Brower, 1873 0. D. 151; Tieman, 1877 C. D. 1, 11 0. 
G. 1; Eoffers and Huggins, 1878 C. D. 62, 13 0. G. 
596; Beattie, 1879 C. D. 142, 16 0. G. 267; Patitz, 
1883 C. D. 101, 25 0. G. 980; Gerard, 1888 C. D. 37, 
43 0. G. 1235; Petzold, 1893 C. D. 95, 55 0. G. 1651; 
Petzold. 1891 C. D. 97, 55 0. G. 1653; Bennett, 1891 

C. D. 100, 55 0. G. 1820; B:ess & Hess, 1891 C. D. 

142. 56 0. G. 1334; Petzold, 1892 C. D. 235, 61 0. G. 
1789; Haggard, 1897 C. D. 47, 80 0. G. 1126; Hill & 
Eenner, 1898 C. D. 38, 82 0. G. 1988 ; Brand, 1898 C. 

D. 62, 83 0. G. 747; Wiessner, 1898 CD. 236, 85 0. 
G. 937; Sherman & Harms, 89 0. G. 2067. 

QUESTIONS OF PEACTICE. 

Mchols. 1870 C. D. 71 ; Bramwell, 1870 C. D. 76 ; Hedn- 
botham, 1875 C. D. 93 ; Siemens, 1877 C. D. 75, 11 0. 
G. 969 ; ITnsworth, 1879 C. D. 69, 15 0. G. 882 ; Ho^an, 
1879 0. D. 253, 16 0. G. 907; Emerson, 1880 C.' D. 

143, ]7 0. G. 1451; Wheeler, 1883 C. D. 12, 23 0. G. 
1031; Henderson v. Eeese, 1883 C. D. 67, 25 0. G. 

, 191: Long, 1883 C. D. 104, 25 0. G. 1189; Eohn, 1883 

C. D. 106, 25 0. G. 1190; Finch, 1884 C. D. 1, 26 0. 

G. 273; Buell, 1884 C. D. 4, 26 0. G. 437; Clarke, 

1884 C. D. 16, 26 0. G. 824. 

Derby, 1884 C. D. 21, 26 0. G. 1208. 

i^bandonment of an invention is not to be presumed from 



161 joijStder of inventions. Rule 41 

the fact that it is shown and described, though not technically 
claimed in a patent, if there is coupled with such description 
and disclaimer a notice and reservation of the right and 
declaration of the purpose to claim such invention in a sub- 
sequent application, which is in fact filed with reasonable 
diligence. 

Ex parte Rohn, 25 0. G. 113, overruled. 
"Upton, 1884 C. D. 26, 27 0. G. 99; Gaboury, 1886 C. D. 
28, 37 0. G. 217; Eansom, 1887 C. D. 22, 39 0. G. 
119: Eoberts. 1887 C. D. 61, 40 0. G. 573; Maxim, 
1888 C. D. 26, 43 0. G. 506: Simonds, 1888 C. D. 89, 
44 0. G. 449; Gillette, 1888 C. D. 89, 44 0. G. 819; 
Smith, 1888 C. D. 131, 44 0. G. 1183 ; Eegan, 1888 C. 
D. 161, 45 0. G. 589; Bullard, 1888 C. D. 169, 45 0. 
G. 1569; Carter, 1889 C. D. 100, 46 0. G. 1391; Ts^eis- 
wanger, 1890 C. D. 37, 50 0. G. 1132; Forbes v. Thom- 
son,^1890 C. D. 61, 51 0. G. 297: Bailev, 1890 C. D. 
123, 52 0. G. 608. 
Feister, 1890 C. D. 167, 53 0. G. 1089. 

The formal abandonment of an application should not be 
required as a condition precedent to allowing another applica- 
tion of the same inventor pending concurrently and in condi- 
tion for allowance to proceed to issue, nor should the Examiner 
require the erasure of any claims which would be allowed if no 
other application awaited consideration. The true course to 
be pursued is that pointed out in Ex parte Gabourv (C. D. 
1886, 28, 37 0. G. 217). 

Forbes v. Thomson, 1890 C. D. 185, 53 0. G. 2042. 

Fuller, 1891 C. D. 243, 57 0. G. 1883. 
An action of an Examiner that amounts in effect to a 
holding that an alleged divisional application covers matter 
that could not be legitimately divided out of the earlier appli- 
cation of which it purports to be a division, is reviewable by 
the Commissioner on petition and does not involve a question 
that can be taken to the Examiners-in-Cliief by way of ap- 
peal. 

Hine, 1892 C. D. 11, 58 0. G. 385; Van Depoele v. Daft, 
1892 C. D. 15, 58 0. G. 520; Freeman, 1892 C. D. 20, 
58 0. G. 522; Fuller, 1892 C. D. 27, 58 0. G. 804; 
Sprague v. Hunter, 1892 C. D. 115, 59 0. G. 1605; 
Feister, 1892 C. D. 203, 61 0. G. 152; Perkins. 1893 
C. D. 222, 61 0. G. 1015; Cahill, 1893 C. D. 1878, 63 
0. G. 1815 ; Drawbauffh, 1893 C. D. 85, 64 0. G. 155. 
Henry, 1893 C. D. 88, 64 0. G. 290. 



Rule 41 JOINDER OF INVENTIONS. 162 

A divisional application should only contain matter carved 
out of the parent case ; but if the matter has been fully dis- 
closed in tlie earlier application, although not reached by any 
claim or statement of invention, such disclosure should be 
sufficient to secure to the applicant the benefit of the date of 
the parent case. 

TJie matter claimed additional to what was claimed in the 
parent case should always be supported by a proper supple^ 
mental oath, or if claimed in the divisional application as first 
filed the oath prescribed by Eule 46 should be correspondingly 
changed. 

Sevmour, 1893 C. D. 127, 65 0. G. 751: Silvers (trade- 
mark), 1894 C. D. 54. 67 0. G. 811: Eichardson v. 
Leido-en, 1896 C. D. 63, 77 0. G. 153: Phelps v. Hardy, 
1896^ C. D. 63, 77 0. G. 631 ; Hunter v. Widitman, 
1897 C. D. 175. 81 0. G. 1788: Barrv, 1898 C. D. 9, 
82 0. G. 337; Osborne, 1898 C. D. 15, 82 0. G. 894; 
Kevser, 1898 C. D. 65, 83 0. G. 915. 
Yideh 1898 C. D. 122, 84 0. G. 808. 

Divisional application takes benefit of the filing date of its 
original. 

' Eichter, 1898 0. D. 276, 85 0. G. 1908: Bullier, 88 0. 
G. 1161: Freucht, 88 0. G. 2068; Claussen, 88 0. G. 
2242; Farquhar, 89 0. G. 706. 

The above report is dated January 19, 1900. 

The reprint of the rules of February 28. 1900, replaced the 
paragraph added July 18, 1899, by the following: 

"Claims for a machine and its product must be presented 
in separate applications. 

"Claims for a machine and the process in the performance 
of which the machine is used must be presented in separate 
applications. 

"Claims for a process and its product may be presented in 
the same application.^' 

This rule was considered by the Supreme Court of the 
TTnited States in United States ex rel., Steinmetz v. Allen, 
Commissioner, etc.. 1904 C. D. 703, 109 0. G. 549. The 
6th and 7th head notes of this case read as follows : 

"6. The provision which compels the separation of claims 
for a process and claims for its apparatus is invalid, because 
it precludes the exercise of any judgment, however related or 
connected they may be. 



163 DIVISION OF APPLICATION. EuIg 42 

''7. The statute gives the right to join inventions in one 
application in eases where the inventions are related, and it 
can not be denied by a hard and fixed rule which prevents 
such joinder in all cases." 

This additional matter was canceled in 1904, 111 0. Gr. 584. 
Upon the subject of division, see further, papers read before 
the Examining Corps of the U. S. Patent OflBce. 

"Title Practice in Cases Involving Division." 
W. H. Whitten, Jr., Dec. 14, 1916, notes to Eule 43. 

"Title Practice Eelating to Division." 
Loren A. Sadler. 

Eead before the U. S. Examining Corps, U. S. Patent Office, 
Dec. 17, 1914. 

Rule 42. Division of Application. 

If several inventions, claimed in a single applica- 
tion, be of such a nature that a single patent may not 
be issued to cover them, the inventor will be required 
to limit the description, drawing, and claim of the 
pending application to whichever invention he may 
elect. The other inventions may be made the subjects 
of separate applications, which must conform to the 
rules applicable to original applications. If the in- 
dependence of the inventions be clear, such limitation 
will be made before any action upon the merits ; other- 
wise it may be made at any time before final action 
thereon, in the discretion of the examiner. A require- 
ment of division will not be repeated without the writ- 
ten approval of a law examiner. After a final require- 
ment of division, the applicant may elect to prosecute 
one group of claims, retaining the remaining claims 
in the case with the privilege of appealing from the 
requirement of division after final action by the ex- 
aminer on the group of claims prosecuted. 

CONSTRUCTIONS. 

The requirement of the approval of a Law Examiner in 
this and some other cases, is an innovation of the present 



Rule 42 DIVISION of APPLiCATioisr. 164 

administration. A part of the Commissioner's Report to Con- 
gress relating to this subject is inserted after the notes. 

The last clause in the rule had its origin in Ex parte King, 
190 0. G. 548. 

CI) Peocedure. 

(3) Filing Date. 

(3) Amendment Eequieing Division. 

(4) Combination, Subcombination and Elements. 

(5) Office Classification. 

(6) Generic and Specific. 

(7) Election to Prosecute One of Several Inventions. 

(8) Process, Product, Apparatus, Etc. 

(9) Particular Devices. 
(10) Appeals. 

(1) Procedure. 

A requirement for division between claims darwn to two 
variations of an invention does not preclude the rejection of 
a divisional application containing one set upon a patent 
issued to applicant upon the other. 
Isherwood, 231 0. G. 1211. 
An application by two parties can not be a division of an 
application by three joint parties. 

Hortzborg and Wohl, 184 0. G. 805. 
Where in requiring an amendment an Examiner chooses to 
give an action on the merits, the action should extend to all 
of the claims in order that the' applicant may not be mislead 
in selecting the species to be retained. (100 0. G. 234; 156 
0. G. 257^) 

Burk, 184 0. G. 288. 
Pressed by a technical and stubborn examiner, who seems 
to have been pursuing what has been called the "division fad." 
Toledo Computing Scale Co. v. Moneyweight S. Co., 178 
F. E. 562. 
If after a requirement of division affirmed by the Com- 
missioner, the requirement is complied with the decision of 
the Commissioner does not preclude the Examiner from re- 
quiring a division of one of the divided applications. 
McHall, 135 0. G. 1361. 
In requiring a division "it is not the duty of the Examiner 
to make an exhaustive search of the art, but the nearest refer- 
ences readily available should in each case be cited." 
Moorehead, 132 0. G. 1586. 
The law as we understand it does not favor the multiplica- 



165 DIVISION OF APPLICATION. Rule 42 

tion of applications and of patents for devices so closely re- 
lated to each other, when they can properly be included in 
one application and in one patent. 

I^orden v. Spaulding, 114 0. G. 1829, C. P. D. C. 
The question of division must be settled before an examina- 
tion on the merits is had. 

Snyder, 1904 C. D. 243, 110 0. G. 2236; Shaft Bearing. 
Where a division has been required the divisional applica- 
tion should not be rejected for want of proper line of division 
unless the patent would undoubtedly be void if issued. 
Davis, ^1904 C. D. 85, 109 0. G. 1068. 
The Examiner inadvertently made his action final requiring 
a division. In the petition to review the action of the Ex- 
aminer the question of division was considered. Swing back 
car seat. 

Pickles, 1904 C. D. 75, 109 0. G. 275. 
An application rejected on the ground that the claims were 
not divisible from those upon which a patent was granted to 
anplicant. 

Hallowell, 1903 C. D. 268, 105 0. G. 1533; Pressed 
Metal Hanger. 
For a later application to be a division of a prior applica- 
tion the invention disclosed in the latter application must 
contain nothing more than what was disclosed in the prior 
application. Upsetting Tool for Drills. 

Hicks, 1903 C. D. 148, 104 0. G. 309. 
Process of making and reproducing sound records. It is not 
intended to hold that the process of casting from a die is not 
an independent invention from the die and process of making 
it; but merely that the claims as now presented contain such 
limitations that it is impossible to draw any proper line of 
division. 

Clay, 1902 C. D. 449, 101 0. G. 2567. 
We do not mean to say that there may not be a way in 
which the power to enact Eule 41 might be brought in ques- 
tion as necessarily involving the denial of a substantial right 
under the law. 

History of the rule S. C. D. C. Frasch, 1902 C. D. 560, 
100 0. G. 1977. 
The fact that a patent issued with two sets of claims in it 
is no reason that the error should be repeated. 
Cavanagh, 1902 C. D. 113, 98 0. G. 2588-9. 
The practice announced in some of the above decisions of 
rejecting aggregation claims preparatory to requiring division 



Rule 42 DIVISION op application^. 166 

will not be followed hereafter, but the question of division 
will first be settled. 

Mansfield & Hayes, 98 0. G. 2363. 
Only a cursory action should be taken on requiring divi- 
sion. 

Eeid, 96 0. G. 3060. 
If the independence of the inventions is clear it is not 
necessary to cite references or state reasons for requiring divi- 
sion. 

Same, 1901 C. D. 123. 
The requirement of a division of an application presup- 
poses that matter exists which might constitute the subject of 
two or more patents. 

Pantsch, 77 C. D. 43, 11 0. G. 597. 

(2) Filing Date. 

The original application having been filed previous to Jan., 
1898, the divisional application filed subsequent to that date 
is subject to the old law limiting the time to amend to two 
years. 

Balzar, 101 0. G. 2824. 
The divisional application has the benefit of the filing date 
of the original case as a date of constructive reduction to 
practice and under the statute relating to public use. 
Waterman, 1902 C. D. 235, 100 0. G. 234. 

(3) Amendment Requiring Division. 

It is no reason for refusing an amendment that it would 
require the division of the application. 

Law, 1904 C. D. 292, 111 0. G. 1039; Krause, 1904 C. 
D. 292, 111 0. G. 1039. 
In the case where an applicant asserts claims for the first 
time by amendment to an independent invention after the 
Examiner has acted upon the case as originally presented, the 
Examiner should not require the applicant to elect which set 
of claims he will retain, but should require him to cancel the 
new set. Method for producing color photographs. 
Selle, 1904 C. D. 221, 110 0. G. 1728. 
If a division is required, an amendment which would still 
require division should not be entered. 

Metzger, 1902 C. D. 407, 101 0. G. 1612. 
While the rule permits a process and products to be Joined, 
nevertheless in a proper case the Office may require a division 
between them. 

E. P. Erdman, 1900 C. D. 197, 93 0. G. 2531. 



167 DIVISION OF APPLICATION. Rule 42 

It is the settled practice of the Office that an amendment 
which would require a division should not be entered. 
E. P. Murmann, 1900 C. D. 183, 93 vO. G. 1721. 
If the mechanism for operating a self-playing instrument is 
a separate invention from the instrument, still a combination 
of the two may be admissible. Eewinder for music sheets, etc. 
Gaily, 1903 C. D. 480, 107 0. G. 1660. 

(4) Combination, Suh combination, and Elements. 

Claims to a particular form of propeller should be divided 
from claims to the general ship construction. Eoller Boat. 
Belair, 1903 C. D. 426, 107 0. G. 540. 

Division should not be required between claims to an ap- 
paratus for painting and claims to the same combination, in- 
cluding as an additional element a mixer which adapts the 
device for use as a cleaner. The structure is unitary and the 
claims are related as combination and subcombinations. Paint- 
ing for Cleaning Apparatus. 

Vegiard Dit. Labonte, 1903 C. D. 317, 106 0. G. 766. 

"While the claim, if presented in a separate application, 
might be properly classified in the class of brush and broom 
handles, it is nevertheless a subcombination of the combina- 
tions covered in claims 1 to 8, inclusive, and it is not shown 
that it has become an independent subject matter of invention 
and manufacture from the general invention covered in the 
preceding claims. Claim 9 may be prosecuted in the same 
application with claims 1 to 8. Mop. 

Davis, 1903 C. D. 280, 105 0. G. 1783. 

Though each of these claims states that the subcombinations 

defined by it is for use in a pump-driving apparatus, the sub- 

combination is a separate and independent invention from the 

general pump construction in which it is used. Electric Pump. 

Hall & Eraser, 1903 C. D. 233, 105 0. G. 743. 

The claims bear the relation of combination and subcom- 
bination claims. They do not cover separate and independent 
inventions. As the structure covered by claims 1 and 2 is 
not adapted for independent use as a buckle, but is peculiarly 
designed for use in a harness construction, it is held that the 
requirement for division should not be insisted upon. 
Wehner, 1902 C. D. 479, 101 0. G. 3106. 

Motor vehicle and feeder and condensor required to be 
divided. 

The claim to the latter two being combination claims and 
not to specific construction should not be required to be 
separated. 

Tyson, 1902 C. D. 476, 101 0. G. 3105. 



Rule 42 DIVISION of application. • 168 

A copyholder and clamp required to be divided notwith- 
standing there were claims to combinations of the two. Copy- 
holder. 

Williamson, 1902 C. D. 459, 101 C. D. 3571. 
Churn, the motor and combination of the paddle therewith 
should not be divided. 

Lemire, 1902 C. D. 396, 101 0. G. 1607. 
Motor and washing machine. Each claim covers a motor 
and none cover anything beyond the frame to be oscillated 
thereby division not required. 

Cramer & Haak, 1902 C. D. 352, 101 0. G. 220. 
Claims 1 and 2 are drawn specifically to an umbilical struc- 
ture; claims 3, 4 and 5 are not so limited; but they never- 
theless cover the unitary structure of the invention. Division 
not required. 

Alminana, 1902 C. D. 293, 100 0. G. 1331. 
A clutch is a distinct and independent invention from the 
mechanism in which it is employed. A division should be 
made. 

The introductory words, "in a lawn mower" does not make 
it a unitarv invention. 

Adams, 1902 C. D. 252, 100 0. G. 453. 
Leveling devices alone for billiard tables are classified 
separately from the table structure, but when the levelers are 
made a part of the combination this combination is classified 
with the table structure and not with the levelers. 

In the present case there are not separate claims for the 
leveler which can be separated from the table structure. Divi- 
sion should not be required. 

Burrows, 1902 C. D. 250, 100 0. G. 452. 
A divisional application can contain only matter carved out 
of the original case. A mechanical application can not be 
carved out of a design. 

Goldman, 1902 C. D. 238, 100 0. G. 234. 
Claims distinguished from each other by the addition of an 
element, held not divisible especially if it does not appear that 
the two have acquired distinct status in the art. 
Gushing, 1902 C. D. 256, 100 0. G. 681. 
Each of these inventions is capable of separate and inde- 
pendent use. They should not, therefore, be presented in the 
same application. They are useful otherwise than as elements 
of combination. 

Moriarty, 1902 C. D. 201, 99 0. G. 2549-50. 
Division ought not to be required between elements of a 



169 DIVISION OF APPLICATION. Rule 42 

combination. Claims to an alleged combination and claims 
for one of the elements thereof. Such claims must be con- 
sidered upon their merits, for there is no warrant for the 
requirement of division between the claims for the combina- 
tion and those for the single element. 

Kugler, 1903 C. D. 84, 98 0. G. 2173. 
Where claims for two elements were presented in a com- 
bination the requirement for division was avoided by inserting 
a claim for the combination of such elements. 

Kugler, 1903 C. D. 84, 98 0. G. 3173. 
It does not appear that the devices covered by the claims 
are such separate articles of manufacture as would necessitate 
a separate application for each. They are not useful in other 
relations or separately complete machines or articles. 

Whitney, 1901 C. D. 318, 97 0. G. 3305. 
Division should not be required between claims covering 
operating mechanism of a locomotive hand car and claims for 
subcombination of such mechanism where it does not appear 
that these subcombinations are useful in other relations or 
they are such as would be separate articles of manufacture. 

Henderson, 1901 C. D. 301, 97 0. G. 1699. 
Apparently if part of one operation is performed by two 
mechanisms they should not be divided even if one could have 
done it all. 

Prossor, 1901 C. D. 164, 97 0. G. 958. 
"VATiile each invention tends to improve the grain drill as a 
whole it does not follow that they may mutually contribute to 
a single result. 

Pelton, 1901 C. D. 37, 95 0. G. 633. 
If the inventions are independent in their actions and dif- 
ferently classified in the Office they may not be joined though 
forming constituent parts of one structure. 

Brownell, 1901 C. D. 31, 94 0. G. 988. 
It is not broadly true that in all cases where a party makes 
and is entitled to a combination claim, he is also entitled in 
the same case to claim as many subcombinations, i. e., ele- 
ments in that combination as he desires. The question is 
whether those elements and subcombinations are useful in 
other relations and are mere improvements on independent 
devices which have acquired a distinct status in the art and 
classification. 

Johnston, ex parte, 1900 C. D. 135, 93 0. G. 1335. 
Division should not be required between a claim to a com- 
bination of elements in a grinding machine and a claim for 



Rule 42 DIVISION of application. 170 

an attachment to be used in that machine for grinding curved 
surfaces, there being no separate classification of the devices. 
Bancroft & Thorne, 1900 C. D. 33, 90 0. G. 1539. 

AVhere there are claims for specific structure and combina- 
tions of the structures and the structures have acquired a 
distinct status in the arts, division should be required between 
the claims for one of the structures and combination of the 
structures on the one hand and the claims for the other struc- 
ture on the other hand. 

Korff, 3 893 C. D. 130, 64 0. G. 1397. 

Where certain devices were claimed separately and also in 
combination, division should not be required unless one or 
each of such devices could be used in other relations and 
belonged to a class that had acquired a distinct status in 
manufacture to trade. 

Learned, 1893 C. D. 84, 63 0. G. 1963. 

Where applicant's machine was in its entirety a mangle or 
ironing machine, the Examiner properly required division as 
to certain claims in the application which related purely to 
a belt-shifting device. 

Wendell, 1893 C. D. 95, 59 0. G. 630. 

Although it appears that certain claims in an application 
are for mechanism capable of use in other relations than that 
which forms the specific subject matter of the application, 
division will not be required if these claims have elements in 
common with the more specific claims of the application. 
Kerr, 1893 C. D. 61, 58 0. G. 1553. 

In order to necessitate the dividing out of elements, when 
the combination as a whole is held to be patentable, it must 
appear first, that the elements or parts of the invention which 
are to be divided out have obtained a definite place in the art 
and manufacture, and second, that they can be used in other 
relations- 

Speckbauch, 1891 C. D. 36, 54 0. G. 1365. 

When one particular element of a machine is dependent 
upon and acts with the other elements thereof to produce a 
single result, it may be claimed in the same application with 
them without rega-rd to the office classification. 
Coe, 1889 C. D. 191, 48 0. G. 119. 

If the devices are so united as to form a combination they 
mav be united in one application. 

' Herr, 1887 C. D. 105, 41 0. G. 463. 

It is not the policy of the Office to require a division where 
the several parts composing the device are intimately con- 



171 DIVISION OF APPLiCATioisr. Rule 42 

nected and operate in the accomplishment of a specific result. 
Freese, 80 C. D. 133, 17 0. G. 1095; Carter & Dwrer v. 
Perry & Dickey, 75 C. D. 111. 
Where elements forming parts of two foreign patents are 
included in one combination a division should not be required. 
Unsworth, 1879 C. D. 69, 15 0. G. 882. 
Where an invention lies mainly in a series of devices form- 
ing a complete set, the operation of each in a certain order 
being necessary to accomplish the desired result, a division 
should not be required. 

Gokey, 1878 C. D. 144, 15 0. G. 295; Shippen, 1875 C. 
D. 126, 8 0. G. 727. 
Combinations parts of one machine. 

Tf there is a proper combination presented a division can 
not be required on the ground that some of the elements are 
old. 

Wenzel, 1880 C. D. 104, 10 0. G. 512. 
A single patent will not be granted for a combination of a 
principal mechanism Avith a number of different elements 
when each of said elements in combination with the principal 
mechanism forms a machine for a distinct and separate pur- 
pose. 

Shepard, 1872 C. D. 244, 3 0. G. 522. 
An article of manufacture may be claimed in the same ap- 
plication with combinations of said article with other elements, 
Adams, 1873 C. D. 18, 3 0. G. 150. 

(5) Office Classification. 

If the claims would be classified in the same subclass it 
does not follow that the requirement for division was improper, 
for it is well settled that the Office classification is not con- 
trolling on the question of division, but is evidential only as 
to the independence of the inventions. 

Strimban, 180 0. G. 323 (cases cited). 

As a general rule applicants are required to restrict the 
claims of their application in accordance with the Office classi- 
fication. When therefore there are claims so independent that 
each requires a distinct and independent search, then clearly 
the applicant should restrict his claims. 

AVhen, however, the inventions, though distinct, are de- 
pendent upon each other and the field of search for all is the 
sam.e then ordinarily there is no reason for requiring division. 
Kalsomine composition and process of producing same. 
Adams, 1903 C. T). 299, 106 0. G. 541. 

Division should be required between an apparatus for man- 
ufacturing roofing paper and the specific structure of the 



Rule 42 Divisioisr of application. 172 

cooling and drying apparatus whicli is used in the complete 
machine. Because the two have attained to distinct places 
in the art and are separately classified. Apparatus for manu- 
facturing of roofincT paper. 

Kidde, 1903 C. D. 278, 105 0. G. 1782. 
Office classification is not and never has been the absolute 
test upon the question of division. It is merely evidence. 
Davison, 1902 C. D. 392, 101 0. G. 1371. 
Two inventions may not be included in one application 
because they are classified alike. 

Davison, 1902 C. D. 392, 101 0. G. 1371. 
If the two inventions are recognized by the Office classifica- 
tion and also by inventors as separate inventions, and if they 
are capable of separate use and sale, the application should 
be divided. (Vessel, hull' and rudder, propellinar.) 
Bustin, 1902 C. D. 285, 100 0. G. 1111. 
They are not separately classified by the Office, It is true 
that each of the mechanisms is separately constructed and 
either one of them can be removed from the machine without 
disturbing the other; nevertheless each one so coacts with the 
other as to mutually contribute to produce a uniform result, 
and in view of the further fact that they are not recognized 
by inventors and manufacturers as having a distinct place in 
the arts manufactures in that they are not separately manu- 
factured and sold, the requirement of division should not be 
insisted upon. 

Smith, 1902 C. D. 196, 99 0. G. 2547. 
Office classification, etc. 

Brown, 99 0. G. 232a. 
Office classification, etc. 

Brill, 1902 C. D. 189, 99 0. G. 2319. 
Furtherm.ore these various devices are separate subjects of 
invention as is shown by the numerous patents contained in 
the subclasses referred to by the Examiner and it appears that 
they are to some extent separate subjects of manufacture and 
sale. Under these circumstances it is well settled that divi- 
sion should be required. 

The parts of a typewriter performing its different functions 
required to be divided. 

Berry v. Fitzsimmons, 1902 0. D. 153, 99 0. G. 862. 
Office classification is not the sole test of unity of diversity 
of invention; it is only one test. 

Pelton, 1901 C. D. 37, 95 0. G. 633. 
Discussion of Office classification as affecting the question of 
division. 

Ex parte Casler, 1900 C. D. 15, 90 0. G. 440. 



173 DIVISION OF APPLICATION". Rule 42 

"The matter of subclasses having acquired a distinct place 
in the arts is in itself no ground for division. 
Carr, 1894 C. D. 11, 66 0. G. 653. 
Where contrivances which mutually contribute to produce a 
unitary result are essential in producing the result, it should 
make no diiference whether they belong to one or a dozen 
classes. 

Sol Kuh, 1876 C. D. 190, 10 0. G. 587. 

(6) Generic and Specific. 

Apparently condemns the Patent Office rule requiring a 
division of specific claims from generic. 

"This case is a Striking example of the unfortunate result 
of too close adherence to rule." 

Benjamin Electric Mfg. Co. v. Dale Co., 158 F. K. 618; 
see Weston, 173 0. G. 286; 141 F. E. 286. 
Two species may not be claimed. Lubricator. 

Brown, 1904 C. D. 50, 108 0. G. 1052. 
The substance is no less impervious because at intervals it 
has been cut away. The word impervious seems to have been 
confused with the word imperforate. Not two species of the 
invention. Medicated Plaster. 

Nash, 1903 C. D. 181, 104 0. G. 1896. 
Tn view of the fact that claims 1 to 5 can be read on both 
figures and claims 6 to 10, inclusive, are specific to but one 
of the figures, it follows that all of the claims may be pre- 
sented in the same application, and division should not be 
required. Traveler's Guide. 

MacKaye, 1903 C. D. 112, 103 0. G. 888. 
One generic and only one specific invention in one applica- 
tion. (Eefers to 141 F. E. 989 and 158 F. E. 617.) 

Where certain claims are broad to all forms and other claims 
are specific to one form of the invention, and another set of 
claims cover a construction which is shown only in connection 
with one specific form, but can be used as well with both 
forms. Held that the several claims bear the same relation 
to each other of combinations and subcombinations, and are 
not specific to different forms of the same invention. Division 
should not be required. 

Shevill, 1902 C. D. 469, 101 0. G. 2824. 
Improvements in the elemental machine which go to per- 
form a certain office in a sewing machine, the mechanism for 
performing that function being old, must be divided. 
Lyons, 1902 C. D. 430, 101 0. G. 2078. 



Rule 42 Divisioisr or APPLiCATioisr, 174 

Claim 1 being generic to all forms of the invention, and 
claim? 2 and 3 -being specific, a division should not be re- 
quired even when the first claim is unnecessarily limited by 
a specific form of one element. 

Metzger, 1903 C. D. 407, 101 0. G. 1612. 

A spring-holding device is a generic claim covering either 
one or two springs. The application need not be divided be- 
tween one and two spring-holding devices. 

Plumley, 1903 C. D. 353, 101 0. G. 447. 

The requirement that the application shall be limited to one 
specific claim under the generic claim is equivalent to the 
requirement of division. Under Eule 43, the divisibility ol 
the application is clear and therefore it is proper to require 
division before action. 

Worden, 1903 C. D. 176, 99 0. G. 1633-1633. 

(7) Election to Prosecute One of Several Inventions. 

No reason is seen for permitting an applicant to nullify an 
election deliberately made and after the application has been 
prosecuted to an allowance on one invention present claims 
for an entirely different invention even for the purpose of 
interference. 

Stimson, 336 0. G. 699. 

Ex parte King, 190 0. G. 548, not in conflict with rule; 
anticipated Stampel, 197 0. G. 907, objections considered. 
An election may be made by the original presentation of 
claims. 

Michell, 196 0. G. 535. 
The adoption of a claim under Eule 96 does not constitute 
an election of species. 

Burk, 184 0. G. 388. 
Two species sought to be included — "While the Examiner's^ 
requirement of division is right the applicant should be re^^ 
quired to elect which one of the specific inventions he desires 
to prosecute in this application." Sash Lock. 
Butcher, 1904 C. D. 60, 108 0. G. 1587-88. 
Having prosecuted to rejection a claim for a process and 
product an applicant can not shift his ground and insert a 
claim to the apparatus by which the process is carried out. 
Construction of cast iron pipes. 

Ferrell, 1903 C. D. 316, 106 0. G. 766. 
The fact that in the first action references are cited against 
only one of the inventions does not permit applicant to shift 
his ground having elected to prosecute the other. 
Eandall & Luck, 1901 C. D. 47, 95 0. G. 3063. 



175 DIVISION OF APPLiCATioisr. Rule 42 

(8) Process, Product, Apparatus, Etc. 
A process and an apparatus by which it is performed, are 
distinct things. They may be found in one patent; they may 
be made the subject of different patents. So may other de- 
pendent and related inventions. 

If patented separately, a foreign patent for either would 
not aifect the other. (Quoted from 213 U. S. 301-318.) 

Fireball Gas Tank & I. Co. v. Commercial Acetylene Co., 
198 F. 655. 
"ISTormally process and product form two inventions; not 
one. Leeds & Catlin Co. v. Victor Talking Machine Co., 213 
TJ. S. 301; 29 Sup. Ct. 495 L. Ed. 805." 

Adrian Wire Fence Co. v. Jackson Fence Co., 190 F. 
E. 195. 
An invention is not made different by the mere fact that 
one is disclosed in a claim for an apparatus and the other in 
the form of a method or process. Where the one invention is 
disclosed, but one patent can issue. 
Eowe, 192 0. G. 519-520. 
An applicant having presented claims for process and article 
and a requirement for division having been made, can not can- 
cel the process claims, get an action on patentability, and then 
reinsert process claims. 

Scott and Beats, 147 0. G. 520. 
Process an apparatus claims may in some cases be so re- 
lated as to make it proper to include them in one application. 
A rejection should be based upon the conclusion that the par- 
ticular process and apparatus are not so related as to warrant 
including them in one case. Grain Binders for Self-Binding 
Harvesters. 

Ament, 116 0. G. 596. 
Process and Apparatus. The process and the apparatus can 
be included in separate patents only because they are separate 
inventions, and it is believed that the validity of these pat- 
ents is not effected by the question whether they are issued 
on the same day. Regulating Alternating Current. Electro- 
motive Force. 

Stuart, 1904 C. D. 485, 113 0. G. 850. 
Pule 41 (old) invalid as to process and apparatus. 

Frach, 1904 C. D. 716, 109 0. G. 554. 
Joinder of invention for machine and process. 
Eule is contrary to statute. U. S. S. C. directed mandamus 
to court to allow appeal from an order requiring division. 
Steinmetz v. Allen, 24 Sup. Ct. Rep. 416; 109 0. G. 
549; 1904 C. D. 703. 



Rule 42 DIVISION of application. 176 

The process of making a matrix and the article cast in it 
are seperate inventions. Art of making matrices for casting 
relief work. 

Jennens, 1904 C. D. 58, 108 0. G. 1587. 
It is, of course, true that a process is always a distinct in- 
vention from a composition of matter where, however, the 
process and the composition produced by it are so closely 
related as in this case, they may properly be regarded as 
dependent inventions, and it is held they may be retained in 
one application. Artificial fuel and the process of making 
same. 

Dallas, 1903 C. D. 325, 106 0. G. 996. 
Process and article. The facts are such in this case as to 
warrant the requirement of division. Eubber Foot Covering. 
Very, 1903 C. D. 318, 106 0. G. 766. 
So far as appears the process claimed necessarily results in 
the composition claimed, although it is possible that the com- 
position might be produced by other process. Division not 
required. 

Adams, 1903 C. D. 299, 106 0. G. 541. 
Division between process and article required when article 
could be made by different process. "While the requirement 
of division may be a hardship upon the assignee, this reason 
is not sufficient to warrant the waiver of the requirement of 
division." Mop. 

Davies, 1903 C. D. 280, 105 0. G. 1783. 
Process and article. The latter can be made by a different 
process. No division required. Access to Abandoned Caveat. 
Williams, 1903 C. D. 5, 105 0. G. 1780. 
While applicant may be permitted to claim a process and 
the product which necessarily results therefrom in a single 
application, he can not be allowed to claim in addition a de- 
vice or article in which the product merely forms an element. 
Lightning Arrester. 

Bennett, 1903 C. D. 258, 105 0. G. 1262. 
Process and product, Avhen latter can be made by some other 
process, required to be divided. 

Christensen, 1903 C. D. 256, 105 0. G. 1261. 
It is clear, therefore, that the article covered in claims 3 to 
6 can be made by other methods than that covered by claims 
1 and 2 and that a disclosure of the article does not neces- 
sarily disclose the method. Division required. 
Foiilis, 1902 C. D. 233, 100 0. G. 232-233. 
Insulating compound and process of making it should be 



177 DIVISION OF APPLICATION. Rule 42 

divided from an insulated conductor and process of making 
it, being insulated by above compound. 

The Office classification, while not conclusive, is very per- 
suasive. 

See Lee, 1902 C. D. 234, 100 0. G. 233. 

The permission of the last clause (old Eule 41) does not 
go so far as to allow the joinder of a process and its product 
at the will of the applicant. If it appears that the process and 
product are classified separately. If it is clear that the process 
does not necessarily result in the product or that the product 
may be made by some other process. The inventions in such 
a case are independent and should be claimed in separate 
applications. 

Powell, 1902 C. D. 163, 99 0. G. 1384. 

Process and Product. 

Ex parte Parent, 1902 C. D. 74, 98 0. G. 1970-1. 

A composition and the process of using it may not be 
claimed in the same application. 

Tschirner. 1901 C. D. 141, 97 0. G. 187. 

Process p.nd machine must be divided. 
Fish, 1900 C. D. 69, 91 0. G. 1615. 

Process and Apparatus. 

See Frasch, 1900 C. D. 50, 91 0. G. 459. 

The words "mutually contribute to produce a single result" 
are not confined to the result of the process, but to the ulti- 
mate result with a view to which the whole invention was 
made. 

Kny, 1893 C. D. 131, 65 0. G. 1403. 

(9) Particular Devices. 

Centrifugal machines for separating solid matter from 
liquid. 

Sjungstrom, 119 0. G. 2235. See note to Eule 68. 
Taper calipers. 

Creamer & Knowlton, 1904 C. D. 295, 111 0. G. 1040. 
Voting machine — general construction — key locking mechan- 
ism and apparatus for irregular votes are three separate in- 
ventions. Voting machine. 

Benke, 1904 C. D. 63, 108 0. G. 1588-9. 
Division required between the telephone switchboard and 
the rest of the svstem. Telephone exchange apparatus. 
Ford, 1904 C. D. 56, 108 0. G. 1327. 
A mixing machine for kneading dough, etc., could be turned 
into a machine for cleaning currents by the introduction of a 
screen. Division insisted upon. 

Staeey, 1904 C. D. 45, 108 0. G. 1050. 



Eule 42 DIVISION of application. 178 

Velocity regulator for fluids in motion. In the first form 
the governing device is connected directly to a valve in the 
conduit, while in the second form the governing device is con- 
nected to the throttle valve in the steampipe to the engine. 
Each of the forms nevertheless is capable of accomplishing the 
same ultimate result. No division required. 

Herreshoff, 1903 C. D. 376, 106 0. G. 1779. 
An improvement in door frames generally must be regarded 
as an independent invention from the arrangement of a port 
over the door in a refrigerator. 

E. P. Stevenson, 1903 C. 1). 238, 105 0. G-. 744. 
Bookkeeping and account book. 

The process does not result in the article, and the articles 
have no connection with the process. 

Stocking e. p., 1903 C. D. 468, 101 0. G. 2823. 
Two different constructions for fastening horse shoes con- 
stitute independent inventions though both may be used on 
one shoe. 

Eodenbaugh and I^aurentz, 1902 C. D. 412, 101 0. G. 
1830. 
Device for making coffee. 

The fact that claims 2 and 3 include broadly as an element 
of the combination a device for producing the extract does not 
make those claims for the same invention as claim 1. 

Before the extract can be measured it must of course be 
produced bv some means. 

Schofield, 1902 C. D. 412, 101 0. G. 1830-31. 
End thrust and lateral bearings required to be divided. 

Stuver, 1902 C. D. 381, 101 0. G. 1130. 
Gas Engine. 

Tyler, 1902 C. D. 320, 100 0. G. 2177. 
Gas engine. Division between sparking igniter, governor 
valve, relief valve and general structure of the engine. 
Tyler, 1902 C. D. 269, 100 0. G. 686. 
Boiler and furnace separate inventions. 

Downie and Messner, 1902 C. D. 240, 100 0. G. 235. 
Claims 1 to 14, inclusive, and claims 17 and 18, though 
drawn to cover several distinct inventions, are held to cover 
inventions so "dependent upon each other that they" mutually 
contribute to produce a single result and therefore may, under 
the provisions of Eule 41, be claimed in one application. 

The single result is the construction of a complete railway 
block system. It is otherwise if the inventions are not mu- 
tually dependent, e. g. 

Kintner, 1902 C. D. 22, 98 0. G. 581. 



179 DzvisiON OF APPLiCATioisr. Rule 42 

The mere fact that the slide rule in this case is adapted by 
reason of the information conveyed thereby for use in the 
same general art as the shoemaker's measure does not make 
the two constitute the same or dependent inventions. 
Dwyer, 1901 C. D. 41, 95 0. G. 1347. 
Division in motor vehicle. Case — 
Eoby, 1900 C. D. 118, 93 0. G. 1035. 

(10) Appeals. 

Mandamus requiring Commissioner to direct Primary Ex- 
aminer to forward appeal on question of division to Exam- 
iners-in-Chief. In error to the Court of Appeals of the District 
of Columbia. 

Ex rel. Steinmetz v. Allan, Com., 1904 C. D. 703, 109 0. 
G. 549. 

Questions of division appealable to the Examiners-in-Chief. 
178 0. G. 320. 

The question whether a design application covers two or 
more inventions is a question of division which is to be deter- 
mined on appeal in the first instance by the Examiners-in- 
Chief. Design for a font of type. 

Schraubstadter, 1904 C. D. 229, 110 0. G. 2015. 

The fact that questions of division are now appealable to 
the Examiners-in-Chief is no reason why a divisible applica- 
tion should receiA^e a more extensive examination on the 
merits. Swing back car seat. 

Pickels, 1904 C. D. 126, 109 0. G. 1888. 

Petition dismissed as matter is appealable to board in first 
instance. Production of sound records. 

Emerson, 1904 C. D. 118, 109 0. G. 1610. 

It appears from the decision, Steinmetz v. Allen, 109 0. 
Gr. 549, 1904 C. D. 703, that a requirement for division is 
to be regarded as a rejection of the application and is appeal- 
able to the Examiner-in-Chief and that the applicant is en- 
titled to demand that his appeal be forwarded, notwithstand- 
ing the fact that the Commissioner has reviewed the Ex- 
aminer's decision and affirmed it upon the petition of applicant. 

This decision approves the first paragraph of rule. Means 
for removing incrustation of calcium sulphate from brine 
heating surfaces. 

Frasch, 1904 C. D. 104, 109 0. G. 1338. 

Appeal from the Commissioner requiring a division does 
not lie to the Court of Appeals of the district. 
Erasch, 1902 C. D. 560, 100 0. G. 1977. 



Eule 42 DIVISION of application. 180 

REPORT OF THE COMMISSIONER OP PATENTS 
FOR 1916. 

EEQUIREMENT OF DIVISION. 

During the year the practice of having all requirements of 
division referred to a law examiner before being made final 
was continued. A total of 793 applications were passed upon. 
Of these, 529 were approved wholly or in part and 363 were 
disapproved. There was a steady decrease in the percentage 
>»of disapprovals as the year went on, indicating that the result 
sought — uniformity of practice — is being approximated in the 
different divisions. 

In addition to applications in which formal memorandum 
was written, many applications were informally considered 
prior to first requirement. In a number of applications it has 
been found necessary to withhold approval until action on 
forms or merits. Frequently disclosures and claims are found 
in such condition that it is not possible to draw clear lines, 
and action on the form and sometimes on merits has been 
found to be the most speedy and satisfactory manner of pre- 
paring the way for a clear line of division or to avoid division. 

The disapprovals have been largely of requirements of divi- 
sion, not properly founded, between process and product and 
combination and subcombination in machines or in composi- 
tions. 

Where the process and product are mutually dependent as 
where the process is the necessary and obvious way of making 
the product or where the process can produce nothing else 
and the product be made in no other practical way, no reason 
for division exists. Division in such cases might result in an 
effectual extension of the monopoly, when the patents are not 
concurrent, and in commercial disadvantages flowing from 
separate ownership of related patents. 

When the claims of an application to process and product 
are not clearly distinct in terms; as where, for example, the 
process claims are defined in part by terms of structure, or 
product claims by steps taken in making the product, division 
is not a proper remedy; action upon the merits should be 
given. Division in some such cases may be required ulti- 
mately, if the claims, when cast in correct form, present two 
distinct subjects matter. 

Where, however, the product and process claims present 
different inventive ideas and the product may be made by 
other processes, known at the time, it is clear that no mu- 
tually dependent relation exists and there is no reason for 



181 DIVISION OP APPLicATioisT. Rule 42 

joining the product with any particular one of the various 
processes usable to produce it. Division in such cases will 
ordinarily be approved, particularly where the process is cap- 
able of making other products and the product claimed is one 
of a known class or type of developed products. 

The questions arising with relation to division between com- 
bination and subcombinations are many often difficult to 
determine. The subcombination, to be divisible, must be cap- 
able of use apart from the combination and in other relations, 
and be of a class of devices which has acquired a distinct 
position of its own in the art, as the subject of separate man- 
ufacture, or invention. This situation is frequently well evi- 
denced by separate office classification and fields of search for 
the two. The subcombination may be a simple element, as 
a gear; or a complex organization, as a governor, conveyor, 
or transfer mechanism. In all cases there should be two dis- 
tinct inventive ideas embodied in mechanism and it is not 
believed that in enforcing divi-sion the office can disregard the 
real character of the invention. Many elements as governors, 
coin-controlled operations, clutches, and gauges are usually or 
necessarily attached to a machine. An invention may lie in 
one of these devices and be capable of application to many 
machines, but it is illustrated with a preferred machine. The 
naming of the illustrated machine or its broad or conventional 
statement as an element of a claim (in a case where the ijn- 
vention or improvement is obviously or apparently in the ele- 
ment alone, and where also claims are directed to the element 
alone) may raise a question of the form of claims, but should 
not in the preliminary treatment induct a requirement of 
division; since division should not be required except where 
the office has formed the opinion that there are two real in- 
vtntions. Division is not the proper remedy for claims im- 
properly drawn but in fact based on one invention. 

The principles governing joinder of combination and sub- 
combination claims to compositions of matter are clearly set 
forth in Ex parte Hentz, 1884 C. D. 6, and are the same as 
those governing other classes of inventions. As there stated, 
a composition may contain a certain number of ingredients 
forming a complete compound, although a lesser number of 
ingredients may contain the basic and essential part of the 
invention and contribute most largely to produce the result. 
The mere fact that one claim names three elements or in- 
gredients and another two or four elements or ingredients is 
'not sufficient reason to require division. The further ques- 
tions are to be determined whether the claims are to composi- 



Rule 42 DIVISION of application. 182 

tions having the same character and purpose, operating in 
substantially the same manner, and whether the subcombina- 
tions are useful in other relations and have a distinct status 
in the arts. 

Division is a requirement with regard to which the Com- 
missioner has a wide discretion. The Office can take care of 
searches and classification by cross-referencing and where 
hardship to applicants may result or apparent injustice be 
done, benefit of doubt should be given to applicants and re- 
quirements which may cause injustice be Avaived. 

The effect of reference to a law examiner of second require- 
ments of division, it has been hoped, would be to reduce to 
some extent the first requirements by eliminating trivial re- 
quirements and requirements unwarranted by the practice and 
not sustainable on reference, since, obviously requirements 
should not be made at all, unless they are well founded in the 
fixed policy of the office. This expectation has to some extent 
been realized. There were first requirements of division made 
in 19] 5 in 6,393 cases, or 1 in 11.13 new cases acted on, and 
in 1916 in 5,662 cases, or 1 in 12.01 cases acted on, a reduc- 
tion from. 8.98 to 8.33 per cent. 

The examiners' reports show a wide difference in the num- 
ber of requirements of division in the first instance in the 
several examining divisions, in proportion to the total num- 
ber of eases handled, and also a divergence in the proportion 
of those sent up for approval compared with those made. 
Divergence to a considerable degree is to be expected on ac- 
count of the widely variant character and complexity of appli- 
cations in different divisions, but it is believed to be larger 
than should be the case. During the coming yesLT efforts will 
be directed to the reduction of first requirements to a more 
uniform basis. 

The policy of requiring submission of requirements of divi- 
sion to a single law examiner has been amply justified. 

The judicial work of the office as distinguished from the 
clerical work of handling the applications is conducted under 
the direction of 43 primary examiners. Each one must study 
those arts wherein applications are assigned to him for exami- 
nation so that he may be able to form an intelligent judg- 
ment as to whether the assistant has properly cited the art 
bearing on applications as they are filed and so that he may 
apply the prior art intelligently in determining questions of 
patentability. 

No one should interfere with this work of the examiner 
excepting as his conclusions may be reviewed on appeal. 



183 CEOss-EEFEEENCEs. Rule 43 

There arise, however, throughout the office a great variety 
of questions respecting which the practice of the office should 
be uniform, and such questions should be submitted to some 
one person in order that they may be jaassed on in accordance 
with a definite theory and not according to the individual 
opinions of 43 different primary examiners. It is physically 
impossible for the Commissioner to do this work, and fre- 
quently the decisions arrived at must be reviewed on appeal 
or petition. Therefore, he could not properly direct a decision 
in the first instance. 

The law examiners are engaged in supervisory work re- 
garding the inception of interferences, the dissolution of inter- 
ferences; the prevention of delay in the prosecution of appli- 
cations; requirements of division; practice in reissuing appli- 
cations, and as to affidavits under Rule 75. Each one of these 
subjects requires substantially the entire time of one man. 
There are other lines of work which can be established with 
great advantage if the number of law examiners can be in- 
creased. T have asked for tAvo additional law examiners, which 
have so far been denied me. 

Rule 43. Cross-References in Cases Relating to Same 
Subject. 

"When an applicant files two or more applications 
relating to the same subject matter of invention, all 
showing but only one claiming the same thing, the 
applications not claiming it must contain references 
to the application claiming it. 

CONSTRUCTIONS. 

This rule introduced 1879. See rules of that date. This 
requirement is so that the limit of each application shall be 
definitely determined. 

Drawbaugh v. Blake, 1883 C. D. 17, 23 0. G. 1320; 
Rule 42 of 1879 abolished in 1888 and present Rules 43 
and 44 substituted. 

The cross-reference should include serial number and date 
of filing. 

This rule not inconsistent with Rule 15, Summers, 160 
0. G. ]039. 
The requirement that a new application shall contain a 
reference to a prior application is not limited to those cases 



Rule 44 EBSBRVATION CLAUSE. 184 

in which the two applications are copending and continuous. 
(Ex parte Lewis and linger construed.) 

There should be a reference in a new application to an 
abandoned application. 
Britt, 116 0. G. 298. 
A reference to applicant's forfeited case required. 

Taylor, 114 0. G-. 1365. 
After allowance of claims by the Examiner-in-Chief the 
application was abandoned and another substituted. Appli- 
cant required to insert reference to abandoned application. 
Lewis & Unger, 106 0. G. 543. 
The statement that the application was a division of an- 
other required to be canceled in view of new matter intro- 
duced. 

Hicks, 104 0. G. 309-310. 
See note to Eule 78. 

Anderson, 1893 C. D. 51, 63 0. G. 463. 
Cross-references must be of such a nature that they will 
impart a more or less definite conception of their scope. A 
reference by serial number alone is not sufficient. 
Everitt, 1889 C. D. 313, 49 0. G. 564. 
A reference in an application for a patent to a contem- 
poraneous pending application or for another patent, for a 
fuller description is not permissible. 

Borgfeldt, 1859 C. D. 149, 49 0. G. 133. 
But if a patent is issued on the first application without 
such disclaimer the patent issued on the first application does 
not bar the patent on the second application for that reason. 
Eoberts- 1887 C. D. 61, 40 0. G. 573. 
The disclaimers contemplated by this rule are between sev- 
eral applications of the same individual covering either by 
claiming or showing the same device or invention, and the 
rule was adopted to prevent the party from procuring a pro- 
longation of the monopoly of his patent by securing two pat- 
ents for the same thing, and also to prevent an abuse which 
occasionally might occur of a reissue upon a patent which 
showed but did not claim the whole invention. 
Firm, 1887 C. D. 37, 39 0. G. 1199. 

Rule 44. Reservation Clauses not Permitted. 

A reservation for a future application of subject 
matter disclosed but not claimed in a pending applica- 
tion will not be permitted in the pending application. 



185 OATH OF APPLICANT. Rule 46 

HISTORY. 

Introduced in 1888. See first note to Eule 43. 

Rule 45. Legible Writing Required. 

The specification and claims must be plainly written 
or printed on but one side of the paper. All inter- 
lineations and erasures must be clearly referred to in 
marginal or footnotes on the same sheet of paper. 
Legal-cap paper with the lines numbered is deemed 
preferable, and a wide margin must always be re- 
served upon the left-hand side of the page. 

Rev. Stat., sec. 4888. 

The Oath. 
Rule 46. Oath of Applicant. 

The applicant, if the inventor, must make oath or 
affirmation that he does verily believe himself to be 
the original and first inventor or discoverer of the 
art, machine, manufacture, composition, or improve- 
ment for which he solicits a patent; that he does not 
know and does not believe that the same was ever 
known or used before his invention or discovery 
thereof, and shall state of what country he is a citizen 
and where he resides, and whether he is a sole or joint 
inventor of the invention claimed in his application. 
In every original application the applicant must dis- 
tinctly state under oath that to the best of his knowl- 
edge and belief the invention has not been in public 
use or on sale in the United States for more than two 
years prior to his application, or patented or de- 
scribed in any printed publication in any country be- 
fore his invention or more than two years prior to his 
application, or patented in any foreign country on an 
application filed by himself or his legal representa- 



Eule 46 OATH OF applicant. 186 

tives or assigns more than twelve months prior to 
his application in this country. If any application 
for patent has been filed in any foreign country by 
the applicant in this country, or by his legal repre- 
sentatives or assigns, prior to his application in this 
country, he shall state the country or countries in 
which such application has been filed, giving the date 
of such application, and shall also state that no ap- 
plication has been filed in any other country or coun- 
tries than those mentioned, and if no application for 
patent has been filed in any foreign country, he shall 
so state. This oath must be subscribed to by the 
affiant. 

If the application be made by an executor or ad- 
ministrator of a deceased person or the guardian, 
conservator, or representative of an insane person, 
the oath shall allege the relationship of the affiant to 
the inventor and, upon information and belief, the 
facts which the inventor is required by this rule to 
make oath to. 

The Commissioner may require an additional oath 
in cases where the applications have not been filed in 
the Patent Office within a reasonable time after the 
execution of the original oath. 

CONSTRUCTIONS. 

Rev. Stat., sees. 4887, 4892, 4896. 
Amended. 

90 0. G. 449 and 89 0. G. 2466. 
ISTotaries in District of Columbia. 

215 0. G. 1267. 
History as to notary being also the attorney. 

Dalton and Magnus, 224 0. G. 741. 
An oath will generally be presumed. Its absence from the 
file wrapper is not conclusive. 

Mine & Smelter Supply Co. v. Braeckel Concentrator Co., 
197 F. R. 897. 
The statute does not require an applicant for a patent to 



187 OATH OF APPLICANT. Rule 46 

state whether he is a sole or joint inventor of the art or 
machine or improvement for which he solicits a patent. A 
false statement in this regard is not perjury. 

United States of America v. Patterson, 174 0. G. 289. 
The informality of lack of a certificate excused in view of 
the circumstances. 

Graham v. Sanghaar, 164 0. G. 740 and 741. 
Word "sole" omitted. 

Mygatt, 160 0. G. 773; Cites 150 0. G. 836; 137 0. G. 
3643; 135 0. G. 348; 97 0. G. 1597; 134 0. G. 636. 
The oath is defective; it refers to the invention claimed in 
the application, where it should refer to the invention de- 
scribed and claimed. It fails to state that the invention has 
not been patented or described in any printed publication for 
more than two years prior to the filing of the application. It 
fails to state that no application for patent has been filed by 
applicants' assigns in foreign countries more than twelve 
months prior to the application in this country. 

Dukesmith v. Corrington v. Turner, 125 0. G. 348. 
See note to Rule 30. 

Sassin, 133 0. G. 3064. 
As a reason why a new oath is not filed it is alleged that 
differences have arisen between the assignee and the inventor, 
in view of which the inventor refused to execute another 
oath. This is not a sufficient excuse where when the applica- 
tion was filed there had been a period of nineteen months 
wherein public use of the invention would bar a patent, which 
period was not covered by original oath. 
Hoschke, 133 0. G. 1045. 
It is equally clear, however, that they can not secure that 
benefit by the mere allegation that they have filed a foreign 
application which entitled them to claim the benefit, but only 
by proving the foreign application. 
Pauling, 115 0. G. 1848. 
If no patent is granted on a foreign application, applicant 
is not required to state that the application was not filed more 
than twelve months previous to present application. 
Gerardot, 115 0. G. 1584. 
Every portion of Rule 46 is material and it can not be held, 
therefore, that a compliance with some of its requirements is 
a compliance with all of them. 

Levenstein & Naef, 110 0. G. 1736. 
It is not sufficient to state that no foreign patent has been 
filed in any foreign country more than three months before 
the application. 

Thorsten von Zweiberg, 110 0. G. 859. 



Rule 46 OATH OF applicant. 188 

The statement that the inventor or applicant has declared 
his intention to become a citizen does not comply with the 
provision of this rule. He is still a citizen of the foreign 
country notvi^ithstanding his declaration, until he is admitted 
to citizenship. 

Ehodes, 105 0. G. 1261. 
In the case of a joint application the allegations that the 
inventors are sole inventors is not sufficient. 
E. P. Cole, 105 0. G. 744. 
The oath in a divisional application must conform to all 
the requirements as to original applications. 

There is no difficulty in the oath to the divisional applica- 
tion in making it appear that the allegation as to two years' 
public use relates to the date of the original application. This 
can be done by a mere change in form without omitting any 
of the essential allegations of the original oath. 
Halsey. 102 0. G. 1294. 
In the absence of a special showing to excuse further delay 
three weeks may be taken as the time limit for the original 
oath. 

Branna, 1901 C. D. 232, 97 0. G. 2534; Moehn, 106 0. 
G. 995; Hicks, 104 0. G. 309, 310. 
Five weeks' time, plus time for transmission, not unreason- 
able. No new oath required. 
Heinze, 265 0. G. 145. 
The omission of the address is not such a fatal defect as 
warrants a refusal to accept, as complete, an application other- 
wise without error. 

Becker, 1901 C. D. 198, 97 0. G. 1592. 
Known or used in American is not a compliance with this 
requirement. Neither is belief without knowledge such com- 
pliance. 

Nicholson, 1901 C. D. 86, 96 0. G. 1035. 
Only the inventor may make the oath. Even an assignee of 
the entire interest when the inventor refuses may not make 
the oath. 

Richards, 1901 C. D. 46, 95 0. G. 1853. 
The assignee may not make the additional oath, even when 
the inventor refuses to do so. 

McCoy, 1897 C. D. 74, 80 0. G. 2037. 
Where an application, executed in Liverpool, England, was 
filed forty-eight days later, the delay was not unreasonable 
and an additional oath should not be required, previously 
decided eases reviewed. 

Wilson, 1893 C. D. 57, 63 0. G. 465. 



189 OFFICEES ADMINISTER OATH. Rule 47 

Instead of the phraseology required by the rules applicant 
avers that the invention "has not been patented to him nor 
with his knowledge or consent in any foreign country," the 
words "to others" being omitted, and the word "foreign" being 
introduced before "country," the effect of which is to omit 
from his oath the statement whether or not a patent for the 
same invention has been issued to others in this country. 
Mason, 1888 C. D. 33-34. 
This oath that the applicant is the first and original in- 
ventor is sufficient to avoid the objection that an English pat- 
ent was taken out jointly in England by applicant and an- 
other. 

Siemens, 1877 C. D. 41, 11 0. G. 1107. 
A new oath must accompany a divisional application. 
Tiesman, Simpson & Collins, 1877 CD. 1 ; Livingston, 
1881 C. D. 42; Lippincott, 1879 C. D. 312. 
This affidavit constitutes prima facie evidence, for the pur- 
pose of the ex parte application, of the fact of invention by 
the applicant. But it constitutes no evidence of any date of 
the application itself. 

Lauder v. Croswell, 1879 C. D. 177, 16 0. G. 405. 
Except in comparatively few cases this affidavit furnishes 
all the proof, which is ever presented to • the Office, that the 
applicant himself made the invention and therefore the pro- 
visions of this rule must be strictly complied with. 

Warnant v. Warnant, 1880 C. D. 36, 17 0. G. 265. 

Rule 47. Officers Authorized to Administer Oaths. 

The oath or affirmation may be made before any 
person within the United States authorized by law to 
administer oaths, or, when the applicant resides in a 
foreign country, before any minister, charge d'affa- 
ires, consul, or commercial agent holding commission 
under the Government of the United States, or before 
any notary public, judge, or magistrate having an 
official seal and authorized to administer oaths in the 
foreign country in which the applicant may be, whose 
authority shall be proved by a certificate of a diplo- 
matic or consular officer of the United States, the 
oath being attested in all cases in this and other coun- 



Rule 47 OFFICERS administer oath. 190 

tries, by the proper official seal of the officer before 
whom the oath or affirmation is made, except that no 
oath or affirmation may be administered by any at- 
torney appearing in the case. When the person be- 
fore whom the oath or affirmation is made in this 
country is not provided with a seal, his official char- 
acter shall be established by competent evidence, as 
by a certificate from a clerk of a court of record or 
other proper officer having a seal. 

When the oath is taken before an officer in a coun- 
try foreign to the United States, all the application 
papers must be attached together and a ribbon passed 
one or more times through all the sheets of the appli- 
cation, and the ends of said ribbon brought together 
under the seal before the latter is affixed and im- 
pressed, or each sheet must be impressed with the 
official seal of the officer before whom the oath was 
taken. 

CONSTRUCTIONS. 

History as to the notary being also the attorney. 
Dalton and Magnns v. Wilson, 224 0. G. 741. 
The purpose of the statute was to require that the authority 
of the notary public be approved directly by a certificate of a 
diplomatic or consular officer. 

Low, 190 0. G. 549; (citing Eose, 180 0. G. 559). 
The oath in question was taken before a notary of one state 
who aflSxed his jurat to an affidavit the venue whereof was 
laid in another. This might have furnished ground for a 
rejection of the affidavit by the Examiner or Commissioner 
of Patents, but there is no fraud shown and the recital in the 
letters patent that the required oath was made is therefore 
conclusive upon this court. 

Empire Cream Separator Co. v. Sears-Eoebuck & Co., 
157 P. E. 238. 
This being so the amendment required an oath that Dolan 
might have found it difficult to take and for want of -vhich 
the patent is void. 

Steward v. American Lava Co., 149 0. G. 602 (S. C. 
U. S.). 



191 SUPPLEMENTAL, OATH. Rule 48 

The Hall Safe Co. v. Herring, Hall, Marvin Safe Co., 
135 0. G. 1804. 
Notary may not be attorney. 

Opinion of the Attorney General, 127 0. G. 3642. 
A single certificate is not sufficient to cover a number of 
jurats signed by the same notary in a foreign country. 
In re Dieterich & Co., 110 0. G. 309. 
This rule was amended to take effect May 1, 1900, in re- 
gard to oaths taken in a foreign country. See amendment. 
The substance of this amendment was contained in 89 0. G. 
2071, in Ex parte Altman, 80 0. G. 1475. 

Hosking, 91 0. G. 1615; Bagot & Dishart, 91 0. G. 1802. 
A notary public in and for the Eepublic of Mexico is not 
authorized to administer the required oath. 

Hirran v. Bolade, 1893 C. D. 80, 63 0. G. 1961. 
An application oath administered by an official not named 
in Rule 47 held to be defective and not to be received as m 
full compliance with the rule. 

Hakansson, 1893 C. D. 76, 63 0. G. 1688. 
A notary who is not authorized by the law of his country 
to administer oaths or take affidavits lacks the requisite au- 
thority to administer the oath required by E. S., sec. 4892. 
(No name), 1892 C. D. 245, 60 0. G. 1481. 
It is not sufficient that the oath was taken before a Belgian 
Burgomaster, unless he was also a notary public, and in the 
latter case competent proof of his official character should be 
furnished. 

Warnant v. Warnant, 1880 C. D. 36, 17 0. G. 265. 

Rule 48. Supplemental Oath for Matter not Orig- 
inally Claimed. 

When an applicant presents a claim for matter 
originally shown or described but not substantially 
embraced in the statement of invention or claim orig- 
inally presented, he shall file a supplemental oath to 
the effect that the subject matter of the proposed 
amendment was part of his invention, was invented 
before he filed his original application, was not known 
or used before his invention, was not patented or 
described in a printed publication in any country 
more than two years before his application, was not 



Rule 48 SUPPLEMENTAL OATH. 192 

patented in any foreign country on an application 
filed by himself or his legal representatives or as- 
signs more than twelve months prior to his applica- 
tion, was not in public use or on sale in this country 
for more than two years before the date of his appli- 
cation, and has not been abandoned. Such supple- 
mental oath must be attached to and properly identify 
the proposed amendment. 

In proper cases the oath here required may be made 
by an executor or administrator of a deceased person 
or a guardian, conservator, or representative of an 
insane person. (See Rule 46.) 

CONSTRUCTIONS. 

An applicant for a patent upon a method, a product, and 
a machine, after striking out the claim for the machine and 
being defeated upon the other two claims in an interference 
proceeding can not reinstate the claim to the machine in the 
same' application. Eule introduced in 1871. 
Cobb, 1879 C. D. 123, 16 0. G. 175. 
Matter within the original disclosure is covered by the 
original oath. 

Mine & S. Supply Co. v. Braeckel Co., 197 P. 900. 
The amendment required and oath that Dolan might have 
found it difficult to take and for want of it the patent is void. 
Supreme Court. 

Steward et al. v. American Lava Co., 149 0. C 603. 
A claim for matter introduced without a supplemental oath, 
invalid. Cases cited. 

American Lava Co. v. Steward, 155 F. E. 737. 
The amendment in this instance was within the scope of 
the original application. In such a case a different rule ap- 
plies. Neither the applicant nor his administrator in case 
of his death, is required by the statutes relating to patents 
to make oath to such an amendment. 

De LaVergne Machine Co. v. Featherstone, 147 U. S. 

209, 229; Pliillips v. Sensenich, 134 0. G. 1806. 

The question whether or not a supplemental oath should be 

required has been uniformly held by this Office to be an ex 

parte matter upon which the proper determination of priority 



193 SUPPLEMENTAL OATH. Rule 48 

is not dependent (Cites 108 0. G. 238; 99 0. G. 445: 84 0. 
G. 1142; 58 0. G. 1415). 

Phillips V. Sensenich, 132 0. G. 677. 
An amendment filed in good faith sufficient to prevent 
abandonment even though it was informal for lack of a 
supplemental oath. 

Gaylord, 117 0. G. 2366. 
It is well established that the requirement for a supple- 
mental oath is an ex parte matter not open to argument in 
interference proceedings. (Auerbach and Gubing v. Wiswell, 
108 0. G. 289.) 

Schubert v. Munro, 113 0. G. 283-4. 
The question whether a supplemental oath should be fur- 
nished is an ex parte one not to be argued on an interference. 
Auerbach and Gubing v. Wiswell, 108 0. G. 289. 
When claims for product were introduced into a process 
application a supplemental oath was required. Where the 
requirement would work special hardship or cause irreparable 
injury it might be waived temporarily, but ordinarily a claim 
can have no standing in the case until supported by the re- 
quired oath. 

Ex parte Ruckrich and Bode, 106 0. G. 765. 
An appeal was taken and the board recommended a certain 
claim, the Primary Examiner required a supplemental oath, 
held, under the circumstances a supplementary oath should 
not be required. 

Matthes, 101 0. G. 3108-3109. 
Supplving connection in drawing suggested in specification. 

Wareham, 97 0. G. 1600. 
Only the inventor may make this oath; the assignee of the 
entire interest can not even when the inventor refuses. 
Ptichards, 1901 C. D. 46, 95 0. G. 1853. 
The absence of a supplemental oath, although it may be 
necessary before allowance, does not furnish a ground for the 
rejection of the claims, and is an ex parte matter not open to 
argument bv an opponent in an interference proceeding. 
Weidemann, 1897 C. D. 194, 81 0. G. 2245. 
The matter claimed additional to what was claimed in the 
parent case should always be supported by a proper supple- 
mental oath, or if claimed in the division application as first 
filed the oath prescribed by Rule 46 should be correspond- 
ingly changed. 

Henry,^ 1893 C. D. 88. 
A supplemental oath is required to justify the insertion of 
a claim through the medium of a divisional application where 



Rule 49 DEAWiNGS. 194 

it would be reqiiired if the claim were to be inserted in tbe 
parent application. 

Forbes v. Thomson, 1890 C. D. 185 ; cited, 1893 C. D. 90. 

It is not necessar}^ that a supplemental oath specify the 

serial number and date of filing of the application to which 

it refers if the proposed amendment is otherwise properly 

identified. 

Cook, 1892 C. D. 232, 61 0. G. 1480. 
See note to Eule 70. 

Perkins, 1891 C. D. 63, 55 0. G. 139. 
There is no rule which excludes a case where apparatus and 
process are appropriately described and but one of tliem 
claimed from being brought within the remedial agency of 
a supplemental oath. 

Lillie, 1890 C. D. 181, 53 0. G. 2041. 
A supplemental oath should be required when it is sought 
to claim anything new. The oath filed with the application 
covers only what is claimed in said application. 

Clarke, 36 0. G. 120; Foster, 33 0. G. 113. See, how- 
ever, Eailway Register Mfg. Co. v. ISTorth Hudson Ry. 
Co., 33 0. G. 355. 
Where a division of the application should have been made, 
but was not required by the Examiner, a claim equivalent to 
one of the former claims may be inserted bv amendment. 
Andrews, 1879 C. D. 99, 16 0. G. 1056. 

THE DRAWINGS. 
Rule 49. Drawings. 

The applicant for a patent is required by law to 
furnish a drawing of his invention whenever the na- 
ture of the case admits of it. 

Rev. Stat., sec. 4889. 

Precautions to be observed in forwarding drawings. 
223 0. G. 653. 

Rule 50. Requisites of Drawings. 

The drawing may be signed by the inventor or one 
of the persons indicated in Rule 25, or the name of 
the applicant may be signed on the drawing by his 
attorney in fact. The drawing must show every feat- 



195 REQUISITES OF DEAWINGS. RuIg 50 

ure of the invention covered by the claims, and the 
figures should be consecutively numbered, if possible. 
Wlien the invention consists of an improvement on 
an old machine the drawing must exhibit, in one or 
more views, the invention itself, disconnected from 
the old structure, and also in another view, so much 
only of the old structure as mil suffice to show the 
connection of the invention therewith. 

See notes under Eule 49. 

EISTOEY. 

The words "and attested by two witnesses" struck out of 
the statute by amendment approved March 3, 1915, and of 
course the rule was amended to conform to the statute, 212 
0. G. 1063. 

CONSTRUCTIONS. 

(1) I]sr Ge^teeal. 

(2) Dpw.\win-gs as Evidence. 

(3) Practice. 

(4)- No MoEE Deawijtgs Than JSTbgessaet, 

(5) What Should be Shown". 

(6) How Illusteated. 

(7) Amendments to Dea wings. 

(1) In General. 

It is also claimed that the patent drawings, if scaled, do 
not exactly accord with the written description of the claims. 
But drawings are to be taken as illustrative of the idea of the 
patent, not as working plans (131 Fed. 77). 

American Yalve & Meter Co. v. Fairbanks-Morse Co., 
249 Fed. 239. 
The drawing with the specifications constitutes a part of 
the patent when issued. 

Phillips V. Sensenich, 134 0. G. 1806. 
That Motsinger had such a definition in mind when he 
drew up his letters patent is evidenced by the fact that his 
drawings show nothing else and that there is nothing in the 
description that the drawings are meant to be only a prefer- 
able or alternative method. 

Motsinger Device Mfg. Co. v. Hendricks Novelty Co., 
149 F. E. 995. 



Rule 50 EEQUISITES OF DEAWINGS. 196 

Drawings are a part of the specification of a patent, and 
for the purpose of ascertaining the sufficiency of the descrip- 
tion of the invention must be read with it. 
Brammer v. Schroeder, 106 F. E. 918. 
An application for a process filed complete except a draw- 
ing, and a drawing is not necessary for a full disclosure of 
the invention, held sufficient to give a date of filing. 

Ludington, 1902 C. D. 241, 100 0. G. 236; Eussell, 1898 
C. D. 208, 84 0. G. 2021. 
The date at which the drawing is returned properly signed 
is the date of filing of the application. 

Arndt, 1900 C. D. 167, 93 0. G. 751; Palmer and Thomp- 
son V. Bailey, 1899 C. D. 66, 83 0. G. 1207. 
An illustration which amounts to no more than a sugges- 
tion is not sufficient warrant for a claim filed nearly two years 
after the application and nine days after an interfering pat- 
ent. 

Dewey v. Colby, 1896 C. D. 12. 
The drawing filed with an application is one of its most 
important and essential parts. It becomes a permanent rec- 
ord in the Office and no one had authority to change any of 
its features by erasure or otherwise mutilating the same. 
Wharton,' 1887 C. D. 88, 40 0. G. 917. 
The drawing of a patent are addressed to those skilled in 
the art and must also be considered in connection with the 
claims and specification and with each other; and a patent is 
not invalidated by a clerical mistake in a drawing, which, 
when so considered, would not mislead one skilled in the art 
to which it relates. 

Cutler Hammer Mfg. Co. v. Union Electric Mfg. Co., 
147 F. E. 266. 
Drawings are a part of the specification of a patent, and 
for the purpose of ascertaining the sufficiency of the descrip- 
tion of the invention must be read with it. 

Emmet v. Fullagar, 124 0. G. 2178. See Eule 173 and 
note (Earnham, 114 0. G. 2090; Schmedmer, 115 0. 
G. 249). 
Held to involve new matter, since where the drawings are 
uncertain they can not be made controlling. 
Lindgren, 266 0. G. 137. 

(2) Drmvings as Evidence. 

Where Y offered in evidence a drawing said to have been 
made during a certain time which is fixed by dates written on 
the drawing and tliere is only Y's unsupported allegation that 



197 EEQXJISITES OF DRAWINGS. Rule 50 

he made the drawing at that time, held that such testimony 
is insufficient to establish these dates. 

Young V. Donnelly, 1898 C. D. 20, 82 0. G. 1417. 
A drawing perfect in every detail and plainly demonstrating 
the principle and practical utility of an invention is not 
reduction to practice, nor is a model, designed, constructed, 
and intended merelv as a model. 

McCormick v. Cleal, 1898 C. D. 492, 83 0. G. 1514. 
JS"© statutory drawing having been filed by Palmer & 
Thompson until after the complete application of Bailey was 
filed, the burden of proof in the interference is upon Palmer 
& Thompson. 

Palmer & Thompson v. Bailey, 1898, C. D. 66, 83 0. G. 
1207. 
Drawings or models not sufficient to establish date of re- 
duction to practice. 

Kassen v. Hetheringen, 88 0. G. 1157. 
Disclosure in a drawing alone if sufficiently plain and clear 
mav be sufficient to show an anticipation of an invention. 
" Peed V. Duel, Com., 1901 C. D., 96 0. G. 1241. 
Pelating to machinery, the invention may be exhibited as 
well in a drawing as in a model, so as to lay the foundation 
of a claim to priority, if such drawing be sufficiently plain 
to enable those skilled in the art to understand it. 

Christensen v. Nojes, 1900 C. D. 21, 90 0. G. 227. 
A drawing offered showing one of the elements of the com- 
bination, but vaguely, held that when other evidence is sub- 
mitted which establishes the fact that the inventor had, at 
the time he made the original drawing, a complete conception 
of this vaguely illustrated element, the fact of conception 
of the invention of the issue is satisfactorily established. 
Eobinson v. Copeland, 1904 C. D. 237, 'ill 0. G. 579. 

(3) Practice. 

The conclusions of the chief draftsman as to whether or 
not the drawings should be accepted will not be disturbed 
unless there is such palpable abuse of his discretion as would 
warrant the exercise of the supervisory authority of the Com- 
missioner. 

Mealus, 136 0. G. 438. 

The drawing should not be changed unless and until the 
question of new matter in the amendment has been deter- 
mined in favor of the applicant. 

Luber, 1894 C. D. 47, 67 0. G. 529. 

The validity of the claim should first be determined before 



Rule 50 EEQUISITES OF DEAWIJSTGS. 198 

a petition can be taken from the Examiner's action requiring 
the cancellation of the figure and the description relating to 
the same, 

Schmidt, 1904 C. D. 165, 110 0. G. 603. 
In questions of new matter new drawings should not be 
entered until decision on appeal. 
Purness, 104 0. G. 1655. 

(4) No More Drawings Than Necessary. 

Applicant required to limit his drawings to one sheet. 
Hilliker, 183 0. G. 1035. 

Figures unnecessary to understanding of case required to 
be canceled. 

Eosenbluth, 176 0. G. 274. 

There are two reasons why drawings should be limited to 
as few sheets as possible, one to save storage, second to save 
expense of reproducing the drawings for a patent. 

In order to decrease the number of sheets of drawings and 
at the same time obviating the necessity of caring for an 
additional sheet it is held that Figs. 4 and 5, contained on 
sheet three, and the descriptions specifically relating thereto, 
shall be canceled. 

Pfautz, 159 0. G.,489. 

Superfluous drawings. 
Nestler, 119 0. G. 1259. 

The entire invention might have been shown on one sheet 
of drawings, and there is very clearly no necessity for four 
sheets. It is not believed, however, that the present sheet one 
can be amended to show all features claimed without con- 
siderable trouble, and therefore the applicant will be per- 
mitted to retain sheets 1 and 3. 
Eoadhause, 111 0. G. 1259. 

Where only one sheet of drawings, including one figure, is 
filed with the application and the specification described four 
figures, and this discrepancy is not discovered until the case is 
examined on the merits. Held that the application must be 
regarded as incomplete until the date when the additional 
drawings are furnished. 

Ehrendriech, 1904 C. D. 75, 109 0. G. 275. 

Since the figures on sheet 1 of the drawings show the in- 
vention clearly, it is contrary to the letter and the spirit of 
the above rules to allow further illustration of the device. 
Phillips, 105 0. G. 1779. 

While an applicant is entitled to all reasonable latitude in 
illustrating his invention he can not be permitted unneces- 



199 EEQUISITES OF DRAWINGS. RuIg 50 

sarily to cumber the records with additional sheets of draw- 
ings when a mere statement in the specification will suffice. 
Lundes, 103 0. G. 1681. 
Appeal from the requirement that the number of sheets of 
drawings be reduced from ten to six. 

Examiner affirmed. The growing custom of multiplying 
drawing condemned, when the Examiner and draftsman agree, 
their decision will be taken as correct in a clear case. 
Dieschir, 1900 C. D. 166, 93 0. G. 551-552. 
A sheet showing a feature not included in the claims is 
superfluous and should not be permitted to remain in the 
case. 

Griffin, 1899 C. D. 224, 85 0. G. 454. 
No more drawings than necessary. 

Krause, 1891 C. D. 164, 56 0. G. 1708. 

(5) What Should he Shown. 

All claims should read on one figure if practicable. 

Daum, 267 0. G. 183. 
Only such matter as is claimed should be illustrated and 
described. 

Parks, 191 0. G. 831. 
A feature not appearing in the claims required to be dis- 
tinctly shown so as to facilitate examination of the case and 
of the art. 

Good, 164 0. G. 739. 
If the device is shown sufficiently, it is unnecessary to show 
a form of its application. 
Perkins, 142 0. G. 855. 
Whether a figure should be canceled or not depends upon 
the question whether the state of the art is such as to render 
it necessary to limit the claims to the form of the device 
shown in other figures. 

Engel, 121 0. G. 1011. 
Where certain figures of the drawing show apparatus for 
making an article and all claims to such apparatus have been 
divided from the case and these figures do not aid in obtain- 
ing an understanding of the article, these figures, and the 
description of the apparatus illustrated therein, should be can- 
celed. 

Crecilius, 115 0. G. 1849. 
The drawing and specification should be limited to the in- 
vention covered bv the claims which have been allowed. 
Anderson, 113 0. G. 2504. 
It is well settled that an alleged lack of novelty furnishes 



Rule 50 REQUISITES OF DEAWINGS. 200 

no good reason for a failure to illustrate matter which is 
claimed. 

Bowman, 113 0. G. 1703. 

A figure illustrating the previous state of the art required 
to be canceled. 

Elliott, 109 0. G. 1337. 

A sheet of drawing showing another application of the 
invented device and showing the details of the machine to 
which it is applied, should be canceled. 
Crisler, 108 0. G. 1869. 

Under the established practice of the Office an applicant is 
permitted to show several species of his invention when the 
state of the art permits the claim to be presented and allowed 
which is broad enough to cover all of the species shown and 
described. 

Garland, 107 0. G. 267. 

When one figure does not show the device claimed, but does 
show details of the surroundings in connection with which the 
device is to be used, held that the figures are objectionable. 
Kidd, 105 0. G. 745. 

As to figure 2 of the drawings, the Examiner says that it 
shows a modification covered by the claims, but is unnecessary 
and should be canceled because the applicant has another 
application covering that specific form. ■ 

The figure retained. 

Leonius, 1903 C. D. 126, 103 0. G. 1164. 

Where the claim of an application is for leather having 
certain characteristics used in a gas meter and no claim is 
made to the form of the gas meter. Held, that the applica- 
tion will be accepted without a drawing, since it is impossible 
to illustrate the character of the leather. 

A drawing mav, however, be subsequently required. 
Kozminski, 1903 C. D. 92, 103 0. G. 429. 

Claim 1 covers the invention shown in all the figures of the 
drawings. A distinction should be made between the inven- 
tion disclosed and a specific illustration of said invention. 
Mitzger, 1902 C. D. 407, 101 0. G. 1612. 

The statute means not merely a drawing, but one showing 
what is described in the specification if it is capable of illus- 
tration. 

A part of what is described can not be omitted any more 
than the whole of it. 

The statute does not say that a drawing shall be furnished 
when the invention can not be understood from description 
alone. 

Edgerton, 101 0. G. 1131. 



201 EEQUISITES OF DRAWINGS, Rule 50 

The drawing must show every feature covered by the claims. 
This disk is shown in section in one of the views; but a draw- 
ing in section when it does not clearly and completely illus- 
trate a structure is not sufficient to show the invention de- 
scribed and claimed. 

Alminana, 100 0. G. 1331. 
Imitation of graining required where this was an element 
of the claim. 

Davin, 100 0. G. 453. 
It is not necessary to retain in the drawing of an applica- 
tion for a patent for an article a figure to illustrate a process 
or step in its manufacture. 

Henry, 1900 C. D. 159, 99 0. G. 1170. 
Division required between machine and article made by it. 
Drawings of the machine required to be eliminated. 
King, 1903 C. D. 158, 99 0. G. 1169. 
A conventional part shown only to illustrate connection 
therewith should be shown so as to be recognizable by one 
skilled in the art. 

Morse, 1901 C. D. 260, 97 0. G. 2982. 
We do not think, however, that the appellant should be 
limited in his invention to the use of the angle which appears 
in the drawing. The specification contains no designation of 
a specific angle, and it is clear that patentee contemplated 
that the angle should be such as would successfully overcome 
the defect which his invention was designed to remedy. 
Johnson v. Woodburn, 97 0. G. 403. 
If a modified form of the apparatus is described in the 
specification it must be shown in the drawing. 
Peck, 1901 C. D. 136, 96 0. G. 2409. 
Where a party wishes to claim the general combination of 
parts and the specific form of some of the elements, he should 
include the preferred form of the elements in the figure of the 
drawings illustrating the combination which he wishes to 
claim, so that all claims will read upon the device shown in 
a single figure. 

Welch, 1900 C. D. 190, 93 0. G. 2104. 
Where the drawings show only detached portions so that 
they do not show their cooperation, it is impracticable for the 
Examiner to point out specifically, the necessary amendment. 
General objections are sufficient to enable a skilled drafts- 
man to cure the defects. 

Tuttle, 1900 C. D. 25, 90 0. G. 1365. 
Where an air compressor was an element of the claim, on 



Rule 50 REQUISITES OF DEA WINGS. 202 

changing air compressor to source of compressed air, the re- 
quirement that the compressor should be illustrated was 
overruled. 

Eouse, 88 0. G. 2242. 
Claims should cover specifically only what is illustrated in 
the drawings; but since it can not be decided in this case 
whether the spurs of cleats are properly illustrated, without 
passing upon the question of new matter involved in some of 
the claims, this petition is dismissed. 
Shearman, 1898 C. D. 190. 
Objection to a drawing that an unnecessarily large variety 
of forms is shown should not be insisted upon when it ap- 
pears that the several figures relate to and show modifications 
of the generic invention claimed. 

Olan. 1897 C. D. 24, 79 0. G. 861. 
An applicant can show and describe as many different forms 
of his invention as can be covered by a generic claim or 
claims. 

Cook, 51 0. G. 1620. 
The drawing must show every feature of the invention. 
Crandall, 35 0. G. 625, E. S. 4889. 
' A drawing must be furnished if the nature of the case ad- 
mits of it whether necessary or not. 

Bennett, 35 0. G. 1003; Crandall, 35 0. G. 625; Chase, 
1879 C. D. 245. 
Modifications described in the specification should be shown 
in the drawing. 

Witty and Caffrey, 29 0. G. 862; Howe, 25 0. G.1189. 
Every feature claimed must be illustrated if capable of 
illustration even if a drawing is unnecessary. 
Chase, 1879 C. D. 245. 
In an application for a process j)atent every stage, or sub- 
process distinctly claimed, which is capable of illustration by 
drawing, must be illustrated, but it is not in general necessary 
to illustrate by drawings the several steps in each stage of 
a subprocess claimed. 

Carter, 1879 C. D. 243. 
A. part not claimed must be illustrated if such illustration 
is necessary to such an understanding of the subject matter 
as will enable those skilled in the art to practice the invention. 
Carter, 1879 C. D. 243, 16 0. G. 809. 
Separate views of the parts which are not claimed should 
be eliminated. 

Kemp, 1879 C. D. 41, 15 0. G. 775. 
If the invention is a combination it should be illustrated 



203 REQUISITES OF DRAWINGS. Eule 50 

as a combination, detached vie^ys of the parts are not suf- 
ficient. 

Kemp, 18T9 C. D. 41. 
Where the operation of the parts is modified, controlled, or 
nnnsually affected by the added improvement, the whole ma- 
chine should be illustrated. 
Kemp, 1879 C. D. 41. 
The specification and drawing must reveal some means of 
carrying the invention into effect. 
'Schoonmaker, 1878 C. D. 40. 
The drawinsf and specification must correspond. 

Schoonma\er, 1878 C. D. 40. 
One or more modifications of the deface claimed may be 
shown in the drawins;. 

Schoonmaker, 1878 C. D. 40; Eagle, 1870 C. D. 137. 
If the machine is well known or if a description is readily 
accessible, it is only necessary to show so much of said ma- 
chine as will illustrate the connection of the improvement 
claimed with it. 

Tracy, 1875 C. D. 80; Kemp, 1879 C. D. 41; Smith, 
1871 C. D. 84; Woodbury, 1869 C. D. 86; Gatling, 
1870 C. D. 92. 

(6) Boiv Illustrated. 
Stippling in approjDriate cases if well executed may be 
used.' 

Kohler, 116 0. G. 569. Modified Bryant, 228 0. G. 1457. 

If in a trade-mark case the drawing indicates colors, they 

must be described. If the colors indicated according to the 

chart are unessential a new drawing omitting this feature 

should be filed. 

Timmerraan Co., 127 0. G. 1991. 
Must be line drawings. A dotted line drawing not ad- 
missible. 

Lloyd, 112 0. G. 251-2. 
The Office is warranted in requiring that the drawings of 
applications be presented in such shape as to facilitate an 
examination of the case. 

Wolferperger & Moran, 113 0. G. 1418. 
Where applicant showed a bottle without stating of what 
material it consists he should not be required to indicate that 
it is of glass according to the chart. 
Person, 110 0. G. 1583. 
The drawing should be so plain that the invention may be 
understood by simply inspecting them without the necessity 
of reading the specification. 

Motsinger, 110 0. G. 601; Whitney, 110 0. G. 603. 



Rule 50 REQUISITES OF DRAWINGS. 204 

The insulating material should be indicated as provided in 
the chart. 

Whitney, 110 0. G. 603. 
The invention appears to relate to the improvement of en- 
gines, tanks and receivers of known construction and their 
connection by pipes and valves and is probably more clearly 
illustrated by the present diagrammatic drawing than would 
be possible by views showing the parts in detail. 
Clark, 109 0. G. 3169. 
It is a great desideratum of Patent Office drawings that 
they should tell their story to the eye without making it 
necessary to go into the specification for explanation, which 
should be apparent upon inspection. 
Sturtevant, 108 0. G. 563. 
The fact that one skilled in the art could make the inven- 
tion from the present disclosure does not overcome the neces- 
sity for such representation of the invention in the drawings 
as will make it intelligible for the purposes of search. 
Sturtevant, 108 0. G. 563. 
The scale of the drawing should be sufficiently large so 
that the structure is clear. 
Hodges, 105 0. G. 1534. 
The art of the mechanical draftsman has improved within 
recent years to such an extent that a drawing filed as part of 
an application for a patent should be so clear that the struc- 
ture which it is intended to illustrate may be easily under- 
stood from a mere inspection of the drawings when the art 
is known to the person who is called upon to read the draw- 
ing. 

Hodges, 105 0. G. 1534. 
It is not necessary that the exact proportions of the parts 
should be indicated. 

Creveling, 1903 C. D. 60, 98 0. G. 1708; Turner, 1903 C. 

D. 439, 101 0. G. 3078. 
A drawing need not be made to scale, but should show all 
features. 

Turner, 101 0. G. 3078. 
The drawing should be such that a mechanic could with 
certainty from it make and use the device which the inventor 
has in mind. 

Seitsinger, 1903 C. D. 333, 100 0. G. 3773. 
If the grain of wood running in a certain direction is an 
element of the claim it should be so shown in the drawing. 
Davin, 100 0. G. 453. 



205 EEQUISITES OP DEAWINGS. RuIg 50 

When possible a drawing should be so complete that the 
purpose and operation of the invention may be readily under- 
stood by one skilled in the art by means of a mere inspection 
of said drawing. 

The necessity of reading the specification in connection with 
the drawing should be avoided if possible. 

The Examiner has suggested adding to the parts of the 
drawings showing the different connection words indicative of 
the particular connection. This suggestion is believed to be 
a good one. 

Hartley, 97 0. G. 2746. 
Modified forms of construction should be shown, if at all, 
in separate figures and in full lines and not in dotted lines. 
Badger, 97 0. G. 1596-7. 
The object of the drawings filed in the Patent Office is at- 
tained if they clearly exhibit the principle involved and in 
a case like this rigid adherence to the dimensions is not re- 
quired or expected. , 

Crown Cork & Seal Co. of Baltimore City v. Aluminum 
Stopper Co. of Baltimore City, 96 0. G. 2575. 
The policy of the Office is now to require drawings to be 
made so full and clear that in all simple easily understood 
cases models may be dispensed with. 

Jove, 1880 C. D. 122, 17 0. G. 122. 
Papts concealed by intervening portions of the machine 
should be represented by dotted lines. 

Barcellos, 1880 C. D. 4, 17 0. G. 110. 
Every feature claimed must be illustrated if capable of 
illustration even if a drawing is unnecessary. 
Chase, 1879 C. D. 245. 

(7) Amendments to Draivings. 

See Eule 72 and notes. 

Where all the figures were canceled from the drawings ex- 
cept some at one end of the sheet, so that the drawing would 
present peculiar and inartistic appearance in the patent. 
Held that new drawings should be furnished. 
Burscheck, 119 0. G. 1258. 
A general statement in the original specification as to a 
modification of the invention does not warrant an amendment 
to the drawing showing a species of the invention not origin- 
ally disclosed. 

Mother, 1904 C. D. 500, 113 0. G. 1145. - 
A drawing may be amended to correspond to a clear de- 
scription in the drawing. 

Zwiebel, 1904 C. D. 198, 110 0. G. 1428. 



Eule 50 KEQUISITES OF DRAWINGS. 206 

By the written permission of the Examiner in charge, in a 
proper case, a drawing may be amended upon filing a blue- 
print of the original drawing and illustrating either on this 
print or by means of a sketch the change in the original draw- 
ing which it is desired to make. 

Zwiebel, 1904 C. D. 198, 110 0. G. 1438. 
Where one of the figures of the drawing, showing an unim- 
portant detail, was objected to in the same action in which 
the claims were rejected on references. Held that a subsequent 
amendment overcoming this objection and requesting a second 
action upon the claims places the case in condition for final 
rejection. 

Marks, 1904 C. D. 115, 109 0. G. 1608. 
An applicant will not be permitted to illustrate a specific 
form of the invention not originally disclosed, although it 
illustrates the generic invention. 

Butcher, 1904 C. D. 60, 108 0. G. 1587. 
The mere inking of a drawing after it is sworn to is not 
such an alteration in the application as would warrant strik- 
ing it from the files. 

Hopkins v. Scott, 1903 C. D. 261, 105 0. G. 1263. 
Where blue-prints of original drawings have been made a 
part of the record, it is permissible to make slight changes 
in the original drawings, but not such changes as practically 
obliterate the identity of any of the original figures. 

Kuhlman & Carpenter, 1903 C. D. 6, 102 0. G. 229. 
Permitted to add a figure to drawing by amendment. 

Larson, 1902 C. D. 452, 101 0. G. 2568. 
A new drawing may not be substituted after allowance to 
eliminate a modification. 
Cooper, 99 0. G. 669. 
The right to make proper amendments to drawings is 
clearly within the authority given to attorneys to prosecute 
applications. 

Wilcox, 1902 C. D. 409, 101 0. G. 1829. 
An applicant can not be permitted to erase the lines of his 
drawing and delineate anew the construction and operation 
of a part fully shown and described or replace or well- 
described but inferior arrangement by a preferable form of 
his invention. 

Clay, 1901 C. D. 256, 97 0. G. 2980. 
Where in a decision upon appeal the Examiners-in-Chief 
call attention to imperfections in the drawing and specification. 
The amendments indicated, only, mav be made. 
Beck, 1901 C. D. 246, 97 0. G. "2746. 



207 EEQUISITES OF DRAWINGS. Eule 50 

Since applicant indicates in his description that there must 
be a connection between the bar and the sheet, it is clear that 
the amendment is not for such new matter as it was proposed 
to insert in Delbev's (1901 C. D. 103) application. 
Wareham, 1901 CD. 204, 97 0. G. 1600. 
Kew matter may not be introduced into the drawing such 
as to show a preferable form of the invention. 

Baptist. 1901 C. D. 150, 97 0. G. 191; Alman, 1901 C. 
D. 151, 97 0. G. 191. 
Where it appears that the changes sought to be made to the 
drawing include matter not originally shown and described 
and are not merely for the correction of clear and unmistak- 
able error of the draftsman. Held that such changes consti- 
tute new matter and should not be admitted. 

John, 1901 C. D. 118, 96 0. G. 1649; Delbey, 1901 C. 
D. 103, 96 0. G. 1240. 
A new drawing may not be filed arbitrarily at the option 
of applicant, the office having made no objection to the old 
drawing. 

Pugh, 96 0. G. 841-2. 
Reference having been made in the original application to 
spurs or cleats, they can be shown, so long as the illustration 
of them does not involve a departure from the original dis- 
closure; but the question as to whether a particular figure 
of the drawings illustrating them and covered specifically by 
the "Claims involves new matter is for the Examiners-in-Chief 
to decide. 

Shearman, 1898 C. D. 190, 84 0. G. 1730. 
A tintype not signed by the inventor or his attorney and 
not attested by two witnesses can not be considered a draw- 
ing within the statutes. 

Palmer & Thompson v. Bailey, 1899 C. D. 66, 83 0. 
G. 1207. 
The strips should be placed at right angles to their present 
position. The device as now illustrated is inoperative, and 
it seems obvious that the defects in the illustration are such 
as could only have occurred through a clerical error in mak- 
ing the drawing. Amendment permitted. 
Bailey, 1898 C. D. 16, 82 0. G. 894. 
There was a clear mistake in the original drawings. Though 
the mistake did not render the patent wholly inoperative, it 
was of such a character that a machine constructed in ac- 
cordance with some of the drawings would have been in- 



Eule 51 TWO DRAWINGS. 208 

operative for some purposes which the inventor was entitled 
to cover by his claims. Eeissue proper. 

Beach v. American Box Machine Co., Horace Imman et 
al., 69 0. G. 1067. 
The drawing should not be changed unless and until the 
question of new matter in the amendment has been determined 
in favor of the applicant. 

Tuber, 1894 C. D. 47, 67 0. G. 529. 
A drawing filed in one application can not be transferred to 
an application filed in place thereof. 

Ayres, 1890 C. D. 103, 51 0. G. 1944. 
If a new attorney appears in the case, or it is necessary to 
have different witnesses from the original ones, such a change 
would be a departure from the original record and can not 
be permitted. The only remedy in such a case is to file a new 
sheet of drawing. 

Arder, 48 0. G. 119; Zacharias, 1902 C. D. 80. 

Rule 51. Two Editions of Drawings. 

Two editions of patent drawings are printed and 
published — one for office use, certified copies, etc., of 
the size and character of those attached to patents, 
the work being about 6 by 9l^ inches ; and one reduc- 
tion of a selected portion of each drawing for the 
Official Gazette. 

Rule 52. Uniform Standard. 

This work is done by the photolithographic process, 
and therefore the character of each original drawing 
must be brought as nearly as possible to a uniform 
standard of excellence, suited to the requirements of 
the process, to give the best results, in the interests 
of inventors, of the office, and of the public. The fol- 
lowing rules will therefore be rigidly enforced, and 
any departure from them will be certain to cause 
delay in the examination of an application for letters 
patent : 

(a) Drawings must be made upon pure white paper 



209 UNIFORM DRAWINGS. -RuIg 52 

of a thickness corresponding to two-sheet or three- 
sheet Bristol board. The surface of the paper must 
be calendered and smooth. India ink alone must be 
used, to secure perfectly black and solid lines. 

(b) The size of a sheet on which a drawing is made 
must be exactly 10 by 15 inches. One inch from its 
edges a single marginal line is to be drawn, leaving 
the ''sight" precisely 8 by 13 inches. Within this 
margin all work and signatures must be included. 
One of the shorter sides of the sheet is regarded as 
its top, and, measuring downwardly from the mar- 
ginal line, a space of not less than I14 inches is to be 
left blank for the heading of title, name, number, and 
date. 

(c) All drawings must be made with the pen only. 
Every line and letter (signatures included) must be 
absolutely black. This direction applies to all lines, 
however fine, to shading, and to lines representing 
cut surfaces in sectional views. All lines must be 
clean, sharp, and solid, and they must not be too fine 
or crowded. Surface shading, when used, should be 
open. Sectional shading should be made by oblique 
parallel lines, which may be about one-twentieth of 
an inch apart. Solid black should not be used for 
sectional or surface shading. Free-hand work should 
be avoided wherever it is possible to do so. 

(d) Drawings should be made with the fewest lines 
possible consistent with clearness. By the observance 
of this rule the effectiveness of the work after reduc- 
tion will be much increased. Shading (except on sec- 
tional views) should be used only on convex and con- 
cave surfaces, where it should be used sparingly, and 
may even there be dispensed with if the drawing be 
otherwise well executed. The plane upon which a 
sectional view is taken should be indicated on the 



Rule 52' UNIFORM drawings. 210 

general view by a broken or dotted line, which should 
be designated by numerals corresponding to the num- 
ber of the sectional view. Heavy lines on the shade 
sides of objects should be used, except where they 
tend to thicken the work and obscure letters of ref- 
erence. The light is always supposed to come from 
the upper left-hand corner at an angle of 45°. 

(e) The scale to which a drawing is made ought to 
be large enough to show the mechanism without 
crov/ding, and two or more sheets should be used if 
one does not give sufficient room to accomplish this 
end; but the number of sheets must be more than is 
absolutely necessary. 

(/) The different views should be consecutively 
numbered. Letters and figures of reference must be 
carefully formed. They should, if possible, measure 
at least one-eighth of an inch in height, so that they 
may bear reduction to one twenty-fourth of an inch; 
and they may be much larger when there is sufficient 
room. They must be so placed in the close and com- 
plex parts of drawings as not to interfere with a 
thorough comprehension of the same, and therefore 
should rarely cross or mingle with the lines. When 
necessarily grouped around a certain part they should 
be placed at a little distance, where there is available 
space, and connected by lines with the parts to which 
they refer. They should not be placed upon shaded 
surfaces, but when it is difficult to avoid this, a blank 
space must be left in the shading where the letter 
occurs, so that it shall appear perfectly distinct and 
separate from the work. If the same part of an in- 
vention appear in more than one view of the drawing 
it must always be represented by the same character, 
and the same character must never be used to desig- 
nate different parts. 



211 UNIFORM DRAWINGS. Rule 52 

{g) The signature of the applicant should be placed 
at the lower right-hand corner of each sheet, and the 
signatures of the witnesses, if any, at the lower left- 
hand corner, all within the marginal line, but in no 
instance should they trespass upon the drawings. 
(See specimen drawing, appendix.) The title should 
be written with pencil on the back of the sheet. The 
permanent names and title constituting the heading 
will be applied subsequently by the office in uniform 
style. 

{]%) All views on the same sheet must stand in the 
same direction and must if possible stand so that they 
can be read with the sheet held in an upright posi- 
tion. If views longer than the width of the sheet are 
necessary for the proper illustration of the invention 
the sheet may be turned on its side. The space for 
heading must then be reserved at the right and the 
signatures placed at the left, occupying the same 
space and position as in the upright views and being 
horizontal when the sheet is held in an upright posi- 
tion. One figure must not be placed upon another or 
within the outline of another. 

{i) As a rule, one view only of each invention can 
be shown in the Gazette illustrations. The selection 
of that portion of a drawing best calculated to explain 
the nature of the specific improvement would be facil- 
itated and the final result improved by the judicious 
execution of a figure with express reference to the 
Gazette, but which must at the same time serve as one 
of the figures referred to in the specification. For 
this purpose the figure may be a plan, elevation, sec- 
tion, or perspective view, according to the judgment 
of the draftsman. All its parts should be especially 
open and distinct, with very little or no shading, and 
it must illustrate the invention claimed only, to the 



Rule 52 UNIFOEM deawings. 212 

exclusion of all other details. (See specimen draw- 
ing.) When well executed, it will be used without 
curtailment or change, but any excessive fineness, or 
crowding, or unnecesasry elaborateness of detail will 
necessitate its exclusion from the Gazette. 

(j) Drawings transmitted to the office should be 
sent flat, protected by a sheet of heavy binder's board; 
or should be rolled for transmission in a suitable 
mailing tube, but should never be folded. 

(k) An agent's or attorney's stamp, or advertise- 
ment, or written address will not be permitted upon 
the face of a drawing, within or without the marginal 
line. 

CONSTRUCTIONS. 

See notes under Eules, 4-9, 50. 

The chart for draftsmen should be followed as to insula- 
tion. 

Whitney, 110 0. G. 603. 
Sectional surfaces of such thinness that they may be repre- 
sented by a single line do not come within the prohibition of 
the last clause. 

Millin and Eeed, 160 0. G. 1037. 
See note to Eule 38. 

The same reference letter may not be used to designate 
parts claimed to be equivalents but differing in structure. In 
such cases a part may be designated by a letter and the modi- 
fied form bv the same letter with an appended figure. 
Cook, 1890 C. D. 81, 51 0. Gt. 1630. 
The lettering of the drawings should correspond to the 
references contained in the descriptive portion of the specifi- 
cation. 

Borgfeldt, 1889 C. D. 199, 49 0. Gr. 132. 
The illustration of the invention in Figure 3 is not clear. 
This due partly to the fact that many of the reference letters 
are too small to be easily discernible. 
Hodges, 105 0. G. 1534. 
It is suggested that letters or numerals be used without 
exponents. 

120 0. G. 907. 
The above is a notice published in the Official Gazette un- 
der a quotation from Eule 52. 



213 uisriFOEM DRAWINGS. Rule 52 

Wherever possible the reference letters must be so placed so 
as to be read with the sheet in an upright position. 
Notice, 173 0. G. 835. 
In defense of a suit it was alleged that one of the witnesses 
signed inventor's and attorney's name. 

This court holds that such irregularities in the signing of 
the drawings, conceding them to exist, are not a defense to 
this action. Should an action be brought to set aside the 
patent, a difPerent question would be presented. 
Hallock V. Babcock Mfg. Co., 124 F. E. 226. 
Where an application executed by the inventor is filed after 
his death and the drawing is signed by the attorney appointed 
by the inventor, held that it is. to be presumed that the draw- 
ing was signed before the death of the inventor and while the 
attorney had power to act. 

Jones, 1903 C. D. 81, 103 0. G. 228. 
If the attorney add his signature after it has been signed 
and duly executed by the inventor, it is objectionable under 
this clause. 

McDonald, 101 0. G. 182. 
Figures 1 to 4 of the drawings illustrate clearly all the fea- 
tures of construction covered by the claims. Figure 5 shows 
the same device only on a smaller scale and in addition it 
shows other parts of the harness all in position on the animal. 
Fig. 5 requires to be canceled. 
Phillips, 105 0. G. 1779. 
When the signature appears on a sheet of drawing in the 
wrong place, upon filing a blue-print of the original sheet, 
the signatures may be erased and written correctly thereon 
by the identical people if the same be done without muti- 
lating the sheet or removing it from the Office. 

If the signatures must be changed the onlv remedy is to file 
a new sheet. (Order 480-33 0. G. 119.) 
Zacharais, 98 0. G. 2171. 
Drawings must be signed. Stamped signatures not suf- 
ficient. 

Krause, 1891 C. D. 164. 
A member of the firm of applicant's attorneys who signs 
the firm name to the drawing is not also a competent witness 
to the signature of the firm. 

Kyle, 1890 C. D. 84, 51 0. G. 1621. 
Views if possible must be placed so that the sheet will not 
have to be placed on its side to read them. 
Com. Order, 172 0. G. 71. 



Rule 53 EEissuE applications. 214 

Rule 53. Drawings for Reissue Applications. 

All reissue applications must be accompanied by 
new drawings, of the character required in original 
applications, and the inventor's name must appear 
upon the same in all cases; and such drawings shall 
be made upon the same scale as the original drawing, 
or upon a larger scale, unless a reduction of scale 
shall be authorized by the Commissioner. 

The foregoing rules relating to drawings will be 
rigidly enforced. A drawing not executed in con- 
formity thereto may be admitted for purposes of ex- 
amination if it sufficiently illustrate the invention, 
but in such case the drawing must be corrected or a 
new one furnished before the application will be al- 
lowed. The necessary corrections will be made by 
the office, upon applicant's request and at his expense. 
(See Rule 72.) 

Eev. Stat., sec. 4895. 
Rule 54. Defective Drawings. 

The foregoing rules relating to drawings will be 
rigidly enforced. A drawing not executed in con- 
formity thereto may be admitted for purposes of ex- 
amination if it sufficiently illustrate the invention, 
but in such case the drawing must be corrected or a 
new one furnished before the application will be al- 
lowed. The necessary corrections will be made by 
the office, upon applicant's request and at his expense. 
(See Rule 72.) 

Sheets are broken at one or more points and eventually by 
reason of handling thereof they will undoubtedly separate on 
the broken lines. The well settled practice in the Office of 
refusing to accept mutilated drawings is founded upon the 
necessity of preserving the records of the Office for an in- 
definite period and must be enforced. 
Frankman, 136 0. G. 1999. 



215 MODEL. Rule 56 

Rule 55. Drawings Furnished by Office. 

Applicants are advised to employ competent drafts- 
men to make their drawings. 

The office will furnish the drawings at cost, as 
promptly as its draftsmen can make them, for appli- 
cants who can not otherwise conveniently procure 
them. 

In the absence of explicit and definite instructions, the 
Office will not remake a drawing at its own expense. 
Rosenheim & Moombil, 122 0. G. 1722. 

THE MODEL. 

Rule 56. When Models are Required. 

A model will be required or admitted as a part of 
the application only when on examination of the case 
in its regular order the primary examiner shall find 
it to be necessary or useful. In such case, if a model 
have not been furnished, the examiner shall notify 
the applicant of such requirement, which will consti- 
tute an official action in the case. When a model has 
been received in compliance with the official require- 
ment^ the date of its filing shall be entered on the file 
wrapper. Models not required nor admitted will be 
returned to the applicants. When a model is required, 
the examination may be suspended until it shall have 
been filed. 

Bev. Stat., sec. 4891. 

CONSTRUCTIONS. 

At the present time the black photographic prints which 
are required to be furnished before any modification of the 
drawing can be made are of a permanent character and can 
be easily photographed. Under these circumstances it does 
not seem that Order 55 should be so construed as to prohibit 
the removal of an original figure. 

Bishop & Bishop, 186 0. 0. 560. 
Models filed during the prosecution of an application for a 
patent but not entered as part of the record thereof. 

Stratton et al., 157 0. G. 755. 

Beath, 111 0. G. 2220. 



Rule 57 EEQUISITES OF MODEL. 216 

If the description is such that the invention can not be un- 
derstood without a model, a model must be furnished. The 
Examiner can not be permitted to leave his work on other 
applications to give his exclusive time to one until he can go 
to Woonsocket. E. I., to examine the full sized machine. 
E. P. McTammany and Wright, 103 0. G. 661. 
The Office, required a model, which applicant furnished, 
clearly indicating, however, at that time and subsequently that 
he wished the model returned. The Office did not, in response 
to applicant, insist upon the permanent filing of a model, nor 
were the receipt and application of the model to the case 
under consideration entered on the file wrapper. On renewed 
request the model should be returned. 

Hunter, 1892 C. D. 192, 60 0. 0. 1477. 
A model should not be endorsed upon the file wrapper and 
be considered a part of the application unless the applicant 
has been required by the Office to furnish one. 
Beaumel, 1891 C. D. 137, 56 0. 0. 1203. 
The specification drawing and model must correspond. 
Schoonmaker, 1878 C. D. 40; Crandall, 1886 C. D. 5, 
35 0. G. 626. 
Definite reasons why a model is required must be given by 
the Examiner in his answer to an appeal from such require- 
ment. 

Jove, 1880 C. D. 122, 17 0. G. 801. 
The policy of the Office now is to require drawings to be 
made so full and clear that in all simple easily understood 
cases models may be dispensed with. 

Jove, 1880 C. D. 122, 17 0. G. 801. 
In case an application is divided one model may serve for 
both applications. 

Morse, 1873 C. D. 81, 3 0. G. 467. 
A model required if the case admits of it even if not neces- 
sary to the understanding of the invention. (Old practice.) 
Murdock, 1874 C. D. 103. 

Rule 57. Requisites of Model. 

The model must clearly exhibit every feature of 
the machine which forms the subject of a claim of 
invention, but should not include other matter than 
that covered by the actual invention or improvement, 
unless it be necessary to the exhibition of the inven- 
tion in a working model. 



217 MODELS AS EXHIBITS. . Rnle 61 

Rule 58. Material. 

The model must be neatly and substantially made 
of durable material, metal being deemed preferable; 
but when the material forms an essential feature of 
the invention, the model should be constructed of that 
material. 

Rule 59. Working Models. 

A working model may be required if necessary to 
enable the office fully and readily to understand the 
precise operation of the machine. 

Rule 60. Models in Rejected and Abandoned Cases. 

In all applications which have become abandoned, 
the model, unless it be deemed necessary that it be 
preserved in the office, may be returned to the appli- 
cant upon demand and at his expense; and the model 
in any pending case of less than one year's standing 
may be returned to the applicant upon the filing of a 
formal abandonment of the application, signed by the 
applicant in person and any assignee. (See Rule 171.) 

Models belonging to patented cases shall not be 
taken from the office except in the custody of some 
sworn employee of the office specially authorized by 
the Commissioner. 

Eev. Stat., sec. 485. 

Rule 61. Models Filed as Exhibits. 

Models filed as exhibits in contested cases may be 
returned to the parties at their expense. If not 
claimed within a reasonable time, they may be dis- 
posed of at the discretion of the Commissioner. 



Rule 62 ' SPECIMENS. . 218 

SPECIMENS. 

Rule 62. Specimens of the Composition. 

Wlieii the invention or discovery is a composition 
of matter, the applicant, if required by the Commis- 
sioner, shall furnish specimens of the composition, 
and of its ingredients, sufficient in quantity for the 
purpose of experiment. In all cases where the article 
is not perishable, a specimen of the composition 
claimed, put up in proper form to be preserved by 
the office, must be furnished. (Rules 56, 60, and 61 
apply to specimens also.) 

Rev. Stat., sec. 4890. 

THE EXAMINATION. . 

Introduction to Rules on the Examination. 

"This, I behave, we owe in large measure to the civil serv- 
ice rules which were first put into effect during General 
Grant's administration, by that great Commissioner, Samuel 
S. Fisher. As a result of his wise action the standard has 
been set so high that the whole examining corps is made up 
of professional men with the stability of character and high 
ideals which the study of any great profession helps to de- 
velop. No one can find in the history of the Office any basis 
for objection to trusting its integrity in any way that the 
disposition of its business demands." 

Com. Thomas Ewing, address Annual Banquet, American 
Patent Law Association, Washington, Feb. 28, 1916. 
I think that every attorney before being admitted to the 
practice should be required to serve as Commissioner for at 
least six months. But since this is not practicable, let me 
give you this general suggestion by way of warning: Don't 
teach the Office bad tricks; don't do sloppy work; don't make 
dilatory actions; don't try to stop someone else who is en- 
titled to it from getting a patent. In a word, don't do all 
the things you complain of when the Office does them. 

Com. Thomas Ewing, address Annual Banquet, American 
Patent Law Association, Washington, Feb. 28, 1916. 



219 examijstations. Rule 63 

Rule 63. Order of Examination. 

Applications filed in the Patent Office are classified 
according to the various arts, and are taken up for 
examination in regular order of filing, those in the 
same class of invention being examined and disposed 
of, so far as practicable, in the order in which the re- 
spective applications have been completed. 

Applications which have been put into condition for 
further action by the examiner shall be entitled to 
precedence over new applications in the same class of 
invention. 

The following cases have preference over all other 
cases at every period of their examination in the order 
enumerated : 

(a) Applications wherein the inventions are deemed 
of peculiar importance to some branch of the public 
service, and when for that reason the head of some 
department of the Government requests immediate 
action and the Commissioner so orders; but in this 
case it shall be the duty of the head of that depart- 
ment to be represented before the Commissioner in 
order to prevent the improper issue of a patent. 

(b) Applications for reissues. 

(c) Cases remanded by an appellate tribunal for 
further action, and statements of grounds of decisions 
provided for in Rules 135 and 142. 

(d) Applications which appear to interfere with 
other applications previously considered and found 
to be allowable, or which it is demanded shall be 
placed in interference with an unexpired patent or 
patents. 

(e) Applications which have been renewed or re- 
vived, but the subject matter not changed. 

(/) Applications filed more than twelve months 



Rule 63 EXAMINATIONS. 220 

after the filing of an application for the same inven- 
tion in a foreign country. 

Applications will not be advanced for examination 
excepting upon order of the Commissioner either to 
expedite the business of the office or upon a verified 
showing that delay will probably cause the applicant 
serious and irreparable injury. 

CONSTRUCTIONS. 

Applications will not be given precedence over other cases 
in the order of examination merel)^ • because the applicant asks 
for an interference with a patent, but only in those cases 
where it appears that there is proper foundation for the 
request. 

Lux, 116 0. G. 2011. 
The question of classification rests entirely with the Office 
and is within the discretion of the Chief of the classification 
division to whom the Examiner refers the case if he has any 
doubt as to its classification. Petition to transfer the appli- 
cation refused. 

Stevenot, 1904 C. D. 337, 111 0. G. 1939. 
The Office can not take up cases in the order of their im- 
portance to the applicant, but must be governed by the rules. 
Bischoff, 1902 C. D. 329, 100 0. G. 2603. 
An application will not be transferred from one division to 
another on the ground that it is not receiving proper treat- 
ment by the Examiner in charge of it. Other relief will be 
applied when it is clear that the Examiner is not performing 
his duties as he should. 

Weaver, 1897 C. D. 165, 81 0. G. 967. 
The classification of the Office is not arbitrary. It is the 
natural work of those who create and develop the arts by 
invention and otherwise. The Office simply recognizes those 
relations and classes which exist in the nature of things. 

Her, 41 0. G. 463; Wilcox & Borton, 45 0. G. 455; 
Combs, 1871 C. D. 209 ; Sartell, 42 0. G. 295. 
Cases which have been appealed and returned to the Ex- 
aminer should take precedence for action over all other appli- 
cations awaiting action except other similar cases. 
Bigelow, 1878 C. D. 114, 14 0. G. 821. 
There is a special propriety, when a patent has only a 
short time to run. in endeavoring to facilitate the determina- 



221 ACTION oisr MERITS. Rule 64 

tion of the issue which may arise in the application for a 
reissue. 

Evarts, 1874 C. D. 39. 

Rule 64. Merits Treated Throughout. At Last Form 
Insisted Upon. 

Where the specification and claims are such that the 
invention may be readily understood, the examination 
of a complete application and the action thereon will 
be directed throughout to the merits; but in each let- 
ter the examiner shall state or refer to all his objec- 
tions. 

Only in applications found by the examiner to 
present patentable subject matter and in applications 
on which appeal is taken to the examiners in chief will 
requirements in matters of form be insisted on. (See 
Rules 95 and 134.) 

HISTORY. 

Eule 39 of 1873 reads in part as follows: 

"The first step in the examination of an application will 
be to determine whether it is in all respects in proper form. 
If, however, an objection as to form is not vital, the Ex- 
aminer may proceed to the consideration of the application 
on its merits; but in such case he must, in his first letter to 
applicant, state all his objections, whether formal or other- 
wise." 

1879. Eule 63 adds to above matter: "And until the 
formal objections are disposed of no further action will be 
taken upon its merits without the order of the Commissioner," 
and inserts "if possible" after "must" in the last clause. 

Present rule inserted in the edition of February 9, 1897. 

See notes to Eule 67. 

CONSTRUCTIONS. 

If any patentable subject matter has been found, the formal 
requirements must be complied with. 
Daum, 267 0. G. 183. 



Rule 64 ACTION on meeits. 222 

ISTot only does no reference cited anticipate appellant claim, 
but no combination of the references can be devised which will 
accomplish this end. 

Heath, 230 0. G. 335-6. 
The claims are therefore rejected on the ground that they 
are broader than applicant's conception. 
Frietts, 227 0. G. 741. 
In the absence of proof of mechanical skill only, and where 
the question of patentability is close, the doubt should be 
resolved in favor of applicant. 
Heath, 230 0. G. 335-6. 
The mere fact that one element of a structure forms part 
of each of two means which are set up as forming a combi- 
nation of elements whereby certain functions may be accom- 
plished is not of itself sufficient ground for holding the claim 
indefinite. 

Isherman, 188 0. G. 807. 
The objection that applicant has not shown "dual means, 
etc.," as specified in claims, should have been a rejection. 
Iserman, 188 0. G. 807. 
It is therefore seen that the application has been found by 
the Examiner to "present patentable subject matter" and con- 
sequently he is justified if the conditions of the case warrant 
in insisting upon his requirements for amendment in matters 
of form. 

Fritsch, 173 0. G. 864. 
The rule contemplates that all formal objections should be 
made in the first action. But they may, if necessary, be 
made afterward. 

Fritsch, 173 0. G. 864. 
If the invention may be understood the fact that additional 
drawings are required does not warrant postponing action on 
the merits. 

Perkins, 142 0. G. 855. 

Bitner, 140 0. G. 256. (See notes to Eules 65-66.) 
The question of main interest is the merits and the post- 
ponement of formal matters is for the purpose of preventing 
delay in reaching a conclusion upon that question. 
. Severy,* 97 0. G. 2745; Green, 130 0. G. 299. 
Where the applicant states in his specification that he does 
not regard his invention as limited to the exact details of 
construction and it appears that his claims are not so limited, 
held that he should not be required to cancel the statement 



223 ACTION Oisr meeits. Rule 64 

as superfluous. (Ex parte Champ, 114 0. G. 1837, distin- 
guished. ) 

Jansson, 120 0. G. 2127. 
Where an applicant in good faith by amendment attempts 
to cure formal objections, if the amendments are not satis- 
factory the Examiner should so state in specific language. 
Sjungstrom, 119 0. G. 2235. 
The question of superfluous illustration should be finally 
raised only after the application has been restricted to allow- 
able claims. 

Metier, 119 0. G. 1259. 
After several objections on the ground of insufficiency of 
disclosure, the claims should be rejecttd. 
Stevens, 119 0. G. 1258. 
The requirement of a supplemental oath (Matthes, 101 0. 
G. 3108) should be disposed of before an appeal is forwarded. 
Teller, 113 0. G. 548-549. 
The outlet to the atmosphere from the three-way valves 12, 
12 should be shown in figure 1 before final action, but their 
appearance upon the drawing is not essential to an under- 
standing of the invention and does not warrant suspension of 
action upon the merits of the invention. 

Clark, 1904 C. D. 573, 109 0. G. 2169. 
In case of alleged duplicate claims an action on the merits 
shoiild be given and formal objection made at the same time 
to the multiplicity of the claims. Under no conditions, how- 
ever, is refusing an action on the merits justifiable (as was 
said in Laperle and Baulard, 67 M. S. Dec. 9429). 

Under this rule the Examiner was required to act upon the 
merits of the application without regard to the action upon 
mere reason for suspending action upon merits. 
Segelhorst, 1904 C. D. 125, 109 0. G. 1887. 
As to final rejection before formal matters disposed of. 

Marks, 1904 C. D. 115, 109 0. G. 1608. 
It is as essential that the ' formal question on which peti- 
tions are taken should be twice acted upon as it is that ques- 
tions involving the merits should be twice acted upon. (Sec. 
4909 E. S.) before appeals from the decisions of the Primary 
Examiners are taken to the Examiners-in-Chief. 
Shone, 1902 C. D. 155, 99 0. G. 863. 
The invention is a complicated one and can not of course 
be readily understood upon a mere inspection of the drawing. 
The drawing, however, is clear when read in connection with 
the specification, and the invention can be understood. 



Eule 64 ACTioisr on merits. 224 

The condition of this application warrants an action 
throughout on the merits. 

Springborn, 1902 C. D. 142, 99 0. G. 667. 
If a part of an amendment is inadmissible the whole should 
be refused admission. 

Pugh, 1901 C. D. 78, 96 0. G. 841. 
The Examiner's action in making formal requirements after 
the case had been decided by the Examiners-in-Chief and the 
Commissioner on appeal was regular. 
Olan, 1897 C. D. 24, 79 0. G. 861. 
If the title given by the applicant is not satisfactory to the 
Examiner, objection should be made, but the Examiner him- 
self should not arbitrarily select such title. 
Becker, 1893 C. D. 95, 64 0. G. 559. 
Final rejection should not be given until all matters of 
form are settled. 

Where a claim was finally rejected and at the same titae the 
statement of invention was criticised as being too broad, the 
final rejection was premature and an amendment touching the 
merits may properly be admitted thereafter. 
Klaus, 1893 C. D. 87, 64 0. G. 299. 
The course prescribed by this rule was not followed and 
on this account serious embarrassment has arisen in its prose- 
cution. 

Eogers, 1890 C. D. 121, 52 0. G. 460. 
Where the Examiner had objected to a claim because of its 
undue breadth only and declined to further consider it upon 
the merits until it had been restricted in form, held that the 
reason given was a reason why the claim should be rejected 
and not why an examination should be refused. 
Opdyke, 1890 C. D. 39, 50 0. G. 1293. 
Ko requirement of amendment insisted upon as a condition 
precedent to future examination can be either legal or per- 
missible which tends in the minutest degree to prevent the 
applicant from obtaining a full investigation of his rights 
on appeal. 

Rogers, 1889 C. D. 227, 49 0. G. 1361. 
Where two office letters were written, one containing formal 
objections and objections to the merits, and the second re- 
peating the former objections to the merits, it was held two 
rejections warranting an appeal. 

Mill, 1887 C. D. 92, 40 0. G. 918. 
If the formal objections are vital no further action than 
to object on account of said formal defects should be taken 
until they are removed. 

Mill, 1887 C. D. 92, 40 0. G. 918; Silltiman, 1886 C. 
D. 1, 34 0. G. 1389. 



225 ACTION ON MERITS, Rule 64 

It is not until the Examiner signs the file wrapper and 
forwards the case to the issue division that he can be con- 
sidered as having rendered a favorable judgment upon it. 
Fredericks and Burns, 40 0. G. 591; Buell, 26 0. G. 
437; Starr, 1879 C. D. 91. 
An Examiner has jurisdiction until the case is allowed and 
passed to issue. 

Fredericks and Burns, 40 0. G. 691; Starr, 1879 C. D. 
91; Buell, 26 0. G. 437. 
The office of Primary Examiner in the Patent Office is a 
continuing one, and does not change with the person of ^ the 
incumbent. 

Fredericks & Burns, 1887 C. D. 66, 40 0. G. 691. 
If formal objections are not vital, all objections should be 
stated in the first letter, but the claims should not be rejected 
until the formal defects are removed. 

Silltiman, 1886 C. D. 1, 34 0. G. 1389. 
Applicants should be told distinctly and definitely what the 
objections are to their applications, reference to pencil marks 
on the specification is not sufficient. 

Wilkins. 1883 C. D. 65, 24 0. 'G. 1271. 
The practice of multiplying actions on cases on questions 
of mere form without at the same time touching the merits 
of the case, condemned as in violation of the spirit of Rule 63. 
Kitson, 1881 C. D. 49, 20 0. G. 1750. 
The matter of form referred to and contemplated in Rule 
63 are such as relate to putting the case in condition to go 
to the Examiner ; such as are required to remedy and utter 
absence of compliance with the prerequisites of an application 
under the law. 

Kitson, 1891 C. D. 49, 20 0. G. 1750. 
An Examiner can not submit a question to the Board of 
Examiners-in-Chief without expressing an opinion. 
Coleman, 1880 C. D. 205, 18 0. G. 1051. 
Upon a decision and notice that all formal objections have 
been removed, followed by a consideration of the case upon 
its merits, neither the same formal objections nor any other 
ought to be insisted on by the Examiner without the authority 
of the Commissioner. 

Starr, 1879 C. D. 91, 15 0. G. 1053. 
I do not think it reasonable after eighteen months spent 
on the merits of the case to insist upon such formal objec- 
tions. 

Bate, 1879 C. D. 84, 15 0. G. 1012. 



Rule 65 NOTICE of rejection. 226 

REJECTIONS AND REFERENCES. 

Rule 65. Notice of Rejection, with Information and 
References. 

Whenever, on examination, any claim of an appli- 
cation is rejected for any reason whatever, the appli- 
cant will be notified thereof. The reasons for the 
rejection will be fully and precisely stated, and such 
information and references will be given as may be 
useful in aiding the applicant to judge of the pro- 
priety of prosecuting his application or of altering 
his specification, and if, after receiving this notice, 
he shall persist in his claim, with or without altering 
his specification, the application will be reexamined. 
If upon reexamination the claim shall be again re- 
jected, the reasons therefor will be fully and precisely 
stated. 

Eev. Stat., sec. 4903. 

HISTORY. 

Kule 33 of 1870 reads as follows: 

"Whenever, on examination, any claim for a patent is re- 
jected for any reason whatever, the applicant will be notified 
thereof, and the reasons for such rejection will be given, to- 
gether with such information and references as may be useful 
in judging of the propriety of renewing the application or of 
altering his specification; and if, after receiving such notice, 
he shall persist in his claim for a patent, with or without 
altering his specification, the case will be reexamined.'' 

The present rule is substantially the same as Eule 64 of 
June 18, 1897. 

(For matter relating to abandonment and time limit, see 
Eules 77, 171, and 172.) 

(See also notes to Eule 68.) 

CONSTRUCTIONS. 

The Examiner should follow the decision of the higher tri- 
bunal whether he agrees with it or not. It would not, how- 
ever, be proper for the Commissioner to instruct the Ex- 
aminer that the claims of a particular application should be 



227 NOTICE OF REJECTION. Rule 65 

allowed in view of a prior decision. The Examiner thinks 
the prior decision is not pertinent if he is in error an appeal 
should be taken to the Board in the first instance. 
Konald, 133 0. G. 279. 

While it is not incumbent upon the Office to answer all the 
arguments presented by counsel, yet the prosecution of the 
case should be so conducted as to permit a fair chance for the 
amendment of the claims after the decision of the Office is 
made clear. 

Herbst, 131 0. G. 361. 

It does not appear that the Examiner has answered the 
contention of the applicant as to the reasons why he regards 
the patent cited as belonging to the same art so as to justify 
its citation in this case. It is quite clear that if an appeal 
should be taken from the final rejection it would be necessary 
for the Examiner to touch upon the subject. It is believed 
that the Examiner should do so before an appeal is made 
necessarv. 

Burge, 139 0. G. 1611. 

Where several claims are rejected it should appear in the 
Examiner's letter whether all the references are cited against 
each claim, or whether they are cited distributively against 
the various claims. In the latter event it should be made 
clear in connection with each claim, which references are re- 
lied upon in the rejection thereof. Where several references 
are cited against a claim it should be made clear whether 
each reference is regarded as sufficient in itself to defeat the 
claims or whether the references are to be taken jointly. If 
to be taken jointly the theory upon which they are combined 
must be pointed out. 

Lincoln, 137 0. G. 3216. 

The common impression, however, the Examiner should 
ordinarily apply the references to the claims, element for 
element is unwarranted. 

Lincoln, 127 0. G. 3216. 

The Examiner should not be required to instruct the appli- 
cant upon the general principles or definitions of the patent 
law. The specific application of the law to this case as under- 
stood by the Examiner seems to have been sufficiently set 
forth bv him. 

Wainright, 1906 C. D. 495, 125 0. G. 2047. 

When an applicant for a design patent presents a claim 
and the Patent Office says you can not have that claim, and 
you can have no claim but the one we suggest, such ruling is 
in eifect a rejection of the claim presented and if the appli- 



Rule 65 NOTICE of eejection. 228 

cant persists in his demand he is entitled to an appeal to the 
Examiners-in-Chief. 

Delavoye, 1906 C. D. 330, 124 0. G. 636. 

The Examiner stated that certain claims were so broad that 
they were "manifestly" impertinent in view of the prior art. 
Such a general statement without some reference to the dis- 
closure in the prior art would not have been proper, but it 
appears that Examiner subsequently cited a reference and re- 
jected the claims. It does not appear that he had cast a 
cloud upon or expressed a doubt as to the validity of claims 
allowed by him. 

Holzer, 1906 C. D. 110, 131 0. G. 1011. 

If two or more claims are met in a single reference or if the 
same ground of rejection apply to them, a single statement to 
that effect makes his position just as clear as would a repeti- 
tion of the statement for each separate claim. 
Murray, 1904 C. D. 358, 111 0. G. 3491. 

It is not necessary that the Examiner shall meet every argu- 
ment advanced by an applicant. It is necessary only that the 
Examiner's position be made plain on the record. 
Stier, 1904 C. D. 156, 110 0. G. 559-600. 

The Examiner's action was as full and complete as could 
be 'required of him. There was simply a disagreement be- 
tween the applicant and the Examiner as to the "case" pat- 
ent after discussion. 

Leilich, 1904 C. D. 21, 108 0. G. 561. 

It is a well recognized principle of law that doubts as to 
the patentability of a claim may be waived in favor of the 
applicant; but this should be a mental process and should 
not be formally expressed in the record. 

Overstrom, 1903 C. D. 363, 105 0. G. 1531. 

It is not fair to the applicant to throw a cloud upon his 
claims by a suggested doubt to their validity without rejecting 
any claim. The statement will be made specific but not ex- 
punged from the record. 

Langerfeld, 1903 C. D. 175, 104 0. G. 1655. 

Where applicant asks that certain features which he is un- 
able to find in the references be pointed out ordinarily the 
Examiner should comply. 

Miller, 1903 C. D. 147, 104 0. G. 309. 

ISTo statement in the Office letter that certain claims are 
novel can be held to be binding upon the Office to the extent 
that the claims of necessity must be subsequently allowed. 
Eowler, 1902 C. D. 465, 101 0. G. 2833. 

It is one of the best settled principles of practice that an 



229 NOTICE OF EEJECTiojsr. Rule 65 

applicant shall be full^y informed of the reasons for rejection 
and shall have ample opportunity to meet them. 
Morely, 1902 C. D. 114, 99' 0. G. 668. 
The objection of inoperativeness should be made only when 
supported by a statement of the reason therefor and not dog- 
matically. The applicant obviously can not know what argu- 
ment to make in the effort to convince the Examiner until 
he know what position the Examiner takes. 
Gibon, 1902 C. D. 117, 99 0. G. 22T: 
The application as a whole should not be rejected, but only 
the claims thereof, and the rejection should be plain, unmis- 
takable terms and the word "rejected" should be used. 

Bvrnes, 191 C. D. 152, 97 0. G. 191; Gammonds, 1902 

"C. D. 78, 98 0. G. 2171; Kendall, 1900 C. D. 174, 93 

0. G. 754; Eastman, 1891 C. D. 178, 57 0. G. 410. - 

All references should be cited on first action, but it is 

sometimes impossible. 

Waters, 1901 C. D. 243, 97 0. G. 2744. 
To what degree it is necessary to point out such pertinence 
depends upon the circumstances of the case. 
Sandman, 1900 C. D. 229, 97 0. G. 2532. 
The purpose of requiring an explanation by the Examiner 
is not arbitrary, but is to enable the applicant to properly 
understand his position, and therefore the extent an'd scope 
of the explanation necessary must depend upon the circum- 
stances of the particular case. Some formal defects are so 
plain that the mere mention of them is sufficient. 
Schweitzer, 1901 C. D. 179, 97 0. G. 1371. 
Where no objections to a claim are made it is to be con- 
cluded that there are no objections. 

Albert, 1901 C. D. 66, 96 0. G. 426. 
The Examiner must refer to the Office letter to which his 
action is a reply. 

Official Order, 94 0. G. 1189. 
This rule must be complied with no matter how well known 
the old way or device it. 

Garms, 1900 C. D. 160, 93 0. G. 190. 
The Examiner is only required to comply with applicant's 
request for fuller explanation when applicant points out on 
what specific points he is in doubt. Henderson, 91 0. G. 228, 
97 C. I). 1599. But when he points out the specific points, 
and asks to have explained the applicability of the references 
to them the Examiner should comply. 

Kroeninger, 1900 C. D. 84, 91 0. G. 2002. 
A general statement by the Examiner that the drawing was 



Rule 65 NOTICE of ebjection. 230 

unsatisfactory because the parts were not shown assembled, 
was held to be sufficiently specific. 

Tuttle, 1900 C. D. 25, 90 0. G. 1365. 
The Examiner should definitely define his position and 
point out the part of the devices referred to which he re- 
gards as anticipating applicant's claim. 

Perkins, 1899 C. D. 141, 88 0. G. 548. 
Applicant is entitled, before the case is closed before the 
Examiner, to an explanation of the references and their bear- 
ing on the claims rejected as full and clear as any explanation 
that would be considered necessary at any subsequent stage 
in the progress of the case. 

Barnes, 1897 C. D. 76, 80 0. G. 2038. 
Where on a question of division applicant alleges that his 
article can not be produced except by his process, and the 
Examiner says it can, without pointing out the mode, the 
Examiner's position is not tenable. 

Hines, 1892 C. D. 164, 60 0. G. 576. 
Applicant is entitled to have his claims allowed or to have 
them rejected in such language as to make it unmistakable 
that action has been had under E. S. 4909. 
Wiard, 1890 C. D. 53, 51 0. G. 155. 
The Examiner should assign all grounds that exist for re- 
jection, in order that the whole case may be carried up on 
one appeal to the Examiners-in-Chief. 

Eoberts, 1890 C. D. 51, 51 0. G. 155; Wiard, 1890 C. 
D. 52, 51 0. G. 155. 
It should never be considered a work of supererogation to 
give an applicant such full and complete information as will 
enable him to judge of the propriety of complying with the 
demands of the Examiner or of taking a petition or an ap- 
peal. 

Burt, 1889 C. D. 251, 49 0. G. 1986. 
The applicant has a right to have his applications exam- 
ined as it stands until reasons of the Examiner for requiring 
an amendment are given. 

Templeton, 1880 C. D. 128, 17 0. G. 910. 
It is not worth while to make suggestions of claims. The 
applicant's attorney is entitled to present the case in his own 
way in the first instance, and to exercise his own judgment 
as to what course he will pursue to protect the applicant's 
interest when he is informed of it. 

Evarts, 1874 C. D. 39, 5 0. G. 429. 
Reasons must be definite, such as will allow of an issue 
being formed. 

Evarts, 1874 C. D. 39, 5 0. G. 429. 



231 WANT OF NOVELTY. Rule 66 

Disparaging remarks as to the character of the invention 
of doubtful propriety. 

Cheesebrough, 1869 C. D. 18. 

Rule 66. On Rejection for Want of Novelty best 
References to be Cited. 

Upon taking up an application for action on the 
merits the examiner shall make a thorough investi- 
gation of the prior art with respect to the invention 
sought to be protected in the application. Upon the 
rejection of an application for want of novelty, the 
examiner must cite the best references at his com- 
mand. When the reference shows or describes inven- 
tions other than that claimed by the applicant, the 
particular part relied on must be designated as nearly 
as practicable. The pertinence of the reference, if 
not obvious, must be clearly explained and the antici- 
pated claim specified. 

If domestic patents be cited, their dates and num- 
bers, the names of the patentees, and the classes of 
invention must be stated. If foreign patents be cited, 
their dates and numbers, the names of the patentees, 
and the classes of inventions must be stated, and such 
other data must be furnished as may be necessary to 
enable the applicant to identify the patents cited. In 
citing foreign patents the number of sheets of draw- 
ing involving the parts relied upon for anticipation 
must be specified, and in case part only of the patent 
be involved, the particular sheets of the drawing con- 
taining the parts relied upon must be identified by 
number, or by stating the numbers of the figures in- 
volved. If printed publications be cited, the title, 
date, page or plate, author, and place of publication, 
or place where a copy can be found, shall be given. 



Rule 66 WANT OF novelty. 232 

When reference is made to facts within the personal 
knowledge of an employee of the office, the data shall 
be as specific as possible, and the reference must be 
supported, when called for, by the affidavit of such 
employee (Rule 76) ; such affidavit shall be subject to 
contradiction, explanation, or corroboration by the 
affidavits of the applicant and other persons. If the 
patent, printed matter, plates, or drawings so referred 
to are in the possession of the office, copies will be 
furnished at the rate specified in Rule 191, upon the 
order of the applicant. 

HISTORY. 

Eule 37 of 1869 reads as follows: 

"Upon the rejection of an application for want of novelty, 
the applicant will be furnished with a specific reference (by 
name, date, and class) to the article or articles by which it 
is anticipated, so that he may be enabled to judge of the 
propriety of renewing his application, or of amending his 
specification to embrace only that part of the invention which 
is new. If he desires a copy of the cases so referred to, or 
of the plates or drawings connected with them, they will be 
forwarded to him, if in possession of the Office, on payment 
of the cost of making such copies." 

The 35th to the 65th words, both inclusive, were omitted 
in 1870 and in 1871, omit all after "Vill" first occurrence, to 
end of bracketed clause and substitute therefore "if he de- 
mands it, be entitled to a specific reference (by name, date, 
and class, or the equivalent thereof.)" 

1873. After "novelty," insert "the Examiner must cite the 
best references at his command." 

The next change was to Eule 65 of 1879. 

Rule 6G of 1888 reads as follows : 

Upon the rejection of an application for want of novelty 
the Examiner must cite the best references at his command. 
When the reference shows or describes inventions other than 
that claimed by the applicant, the particular part relied on 
will be designated as nearly as practicable. The pertenence 
of the reference, if not obvious, must be clearly explained and 
the anticipated claim specified. 

If domestic patents be cited, their dates and numbers, the 
names of the patentees, and the classes of inventions must be 



233 WANT OF NOVELTY. Rule 66 

stated. If foreign patents be cited, their dates and numbers 
must be stated and such other data must be furnished as will 
enable the applicant to identify the patents cited. If printed 
publications be cited, the title, date, page, or plate, and place 
of publication, or place where a copy may be found, will be 
given. When reference is made to facts within the personal 
knowledge of an employe of the office, the data will be as 
specific as possible, and the reference must be supported, when 
called for, by the affidavit of such employe (Rule 76) ; such 
affidavit shall be subject to contradiction, explanation, or cor- 
roboration by the affidavits of the applicant and other persons. 
If the patent, printed matter, plates, or drawings so referred 
to are in the possession of the Office, copies will be furnished 
at cost upon the order of the applicant. 

In 1893 the words "at the rate specified in Rule 218" were 
inserted instead of "at cost," last line. 

June 18, 1897, the requirement relative to foreign patent 
that "the names of the patentees, titles of the inventions, and 
classes of inventions must be stated" was inserted and with 
reference to publications that the "author" must be given. 

See Rules 68, 69 and 77. 

CONSTRUCTIONS. 

(1) Grounds of Rejection in General. 

(2) Peopkiety of References. 

(3) Action by the Office. 

(4) Action by the Office as Constituting a Proper 

Final Rejection of Reopening the Case. 

(5) New Matter. 

(6) Rejection on Applicant's Own Patent or Applica- 

tion. 

(7) Action of Office as to Unity or Diversity of Inven- 

tion. 

(8) Additional Cases. 

(J) Grounds of Rejection in General. 

If the Kxaminor knows of, or can find any art bearing upon 
the disclosure of the application he should cite it without 
referejice lo \he Vi'ording of claims. Said of a delayed appli- 
cation for a reissue. 

Altman, 220 0. G. 1373. 
The Examiner ruled that he could not suggest a claim. 

Vesey, 195 0. G. 273. 
When the pertenency of the references is obvious as where 
the invention is simple or includes only the invention of the 



Rule 66 WANT OP novelty. 234 

applicant a detailed application of the references is unneces- 
sary (133 0. G. 1188; 152 0. G. 229; 154 0. G. 1411). 
Inman, 160 0. G. 1038. 
The fact that a new claim was inserted in an application 
for a patent by the attorney for the applicant without any 
new oath does not render the patent invalid as to such claim, 
where it was within the invention described in the specification. 
For cases in point, see Vol. 38, Cent. Dig. Patents, sec- 
tion 402 

Cutler-Hammer Mfg. Co. v. Union Electric Mfg. Co., 147 
F. E. 266. 
In the absence of proof of mechanical skill only, and where 
the question of patentability is close the doubt should be 
resolved in favor of the applicant. 
Hiath, 230 0. G. 335-6. 
The claims are therefore rejected on the ground that they 
are broader than applicant's conception. 
Fritts, 227 0. G. 741. 
Where an application is a continuation of one of prior date 
to the reference cited against common subject matter, the 
reference should not be insisted upon. 
Allport, 220 0. G. 1374. 
The piecemeal presentation of the art was of course annoy- 
ing to the applicant and is not consistent with the attempt 
to hold the applicant strictly to the rule of prompt prosecu- 
tion. 

Levy, 220 0. G. 1043. 
It is the policy of the Office closely to scrutinize claims 
after they have been pending in the Office an unusual length 
of time. 

Cases, Fritts, 227 ' 0. G. 737, distinguished from Good- 
win Film Co. V. Eastman Kodak Co., 213 F. 231. 
In view of the facts shown, no good reason is seen why the 
Examiner should be required to repeat in each letter an 
explanation of the reference once given. 
Shillabarger, 200 0. G. 855. 
When a patent has inadvertently been granted, an applica- 
tion should not be rejected unless in a very clear case. 
Both V. Burr, 200 0. G. 582. 
Examiner required to identify figure of drawing of for- 
eign patents referred to and, if only one sheet, that fact shall 

Order No. 2,096, 199 0. G. 311. 
When the applicant canceled two claims that were held 



235 WANT OF NOVELTY. Rule 66 

objectionable and immediately reinserted one a statement to 
that effect was held sufficiently explicit. 

Ehrlich and Berthem, 191 0. G. 1068. . 
An action by the German Office cited — considered, but not 
followed. 

Maas, 180 0. G. 1138. 
Complete actions on the part of the Office are as important 
as the avoidance of piecemeal prosecution on the part of the 
applicant. 

Garrett, 158 0. G. 701. 
The requirement by the Examiner that a statement be made 
pointing out the parts or elements of his claims, approved. 

Hoch V. McCaskey v. Hopkins, 141 0. G. 1161. 
In all cases where Examiner holds a claim otherwise clear 
and intelligible to be functional, that is for a function merely 
or because it fails to include sufficient mechanical elements 
to effect the function expressed in the claim, the action of the 
Examiner shall be a rejection of the claim upon the ground 
that the claim does not point out the invention with suf- 
ficient particularity and distinctness to meet the requirements 
of section 4888, Eevised Statutes. The rejection shall at the 
same time include all of the grounds enumerated in Eule 
133 that the Examiner thinks a|)plicable. Applicant's remedy 
from such action is by way of appeal successively to the 
Examiners-in-Chief, the Commissioner and' the Court of Ap- 
peals of the District of Columbia. Second, that only where 
claims are indefinite, in the sense that they are ambiguous, 
equivocal, lacking in clearness, or unintelligible shall the 
Examiner's action be in the form of an objection. The rem- 
edy from this action is by petition to the Commissioner in 
person. 

Bitner, 140 0. G. 256. 
The Examiner finally rejected claims on a request for ex- 
planation. The Examiner did not refuse the request on the 
ground that the pertinency had been fully explained ; but by 
coupling his explanation with a final rejection he rendered 
the information of no avail except through petition. 

Walker, 129 0. G. 481; Andrews, 172 0. G. 1089. 
As a general rule the Office may take judicial notice of its 
own records; but it should not in violation of the rule of 
secrecy refer to these records in communications which go to 
strangers to the cause except for imperative reason. 

Eobinson v. Copeland, 102 0. G. 467-6; Morley, 1902 
C. D. 144, 99 0. G. 668. 
Substantially the same claim as that herein presented was 



Rule 66 WANT OF novelty. 236 

found to be patentable in the earlier application. Upon 
renewal of that application after forfeiture it was subject to 
a new examination (Eule 176) and was again adjudged to 
be patentable. Under these circumstances any doubt as to 
the patentability of the claim in the new application should 
have been resolved in the applicant's favor. Petition to direct 
the Examiner to withdraw his rejection granted. The deci- 
sion of a formeu Examiner should be very persuasive on his 
successor. (Slarr, 15 0. G. 1053; Nealson, 81 0. G. 1787; 
Fowler, 101 0. G. 1833.) 
Hay, 139 0. G. 197. 
A claim will be given the broadest interpretation of which 
its terms are capable. 

Milans, 135 0. G. 1122. 
The Examiner should follow the decision of the higher 
tribunal whether he agrees with it or not. It would not, 
however, be proper for the Commissioner to instruct the 
Examiner that the claims of a particular application should 
be allowed in view of a prior decision. The Examiner thinks 
the prior decision is not pertinent if he is in error an appeal 
should be taken to the Board in the first instance. 
Konold, 133 0. G. 2179. 
Where the specification of a patent cited as an anticipation 
does not state of what material the article is composed it 
can not ordinarily be assumed to be ef any particular ma- 
Walters, 130 0. G. 1483. 
After previous claims — "What remains would appear to be 
a mere carrying out of the purpose of the original invention." 
Wickers and Farlong, 129 0. G. 2074. 
It does not appear that the Examiner has answered the 
contention of the applicant as to the reasons why he regards 
the patent cited as belonging to the same art so as to justify 
its citation in this case. It is quite clear that if an appeal 
should be taken from the final rejection it would be necessary 
for the Examiner to touch upon the subject. It is believed 
that the Examiner should do so before an appeal is made 
necessary. 

Burge, 129 0. G. 1611. 
ISTo absolute right is conferred by the grant of the patent. 
The patentee is merely put in position to assert his prima 
facie right in case of infringement and have the same adjudi- 
cated in a court where extrinsic evidence, if important, may 
be heard and not confined as in this court, to a review of the 
decisions of the Patent Office upon the record as made up 



237 WANT OF NOVELTY. Rule 66 

therein. (In re Thomson, 26 App. D. C. 426-439 ; Seymour 
V.' Osborne, 11 Wall 516-544; Parker & Whipple Co. v. Yale 
Clock Co., 1887 C. D. 584, 41 0. G. 811.) 
Heroult, 127 0. G. 3217. 

Where several claims are rejected, it should appear in the 
Examiner's letter whether all the references are cited against 
each claim, or whether they are cited distributively against 
the varioiis claims. In the latter event it should be made 
clear in connection with each claim which references are re- 
lied upon in the rejection thereof. Where several references 
are cited against a claim it should be made clear whether each 
reference is regarded as sufficient in itself to defeat the claims 
or whether the references are to be taken jointly. If to be 
taken jointly, the theory u]3on which they are combined must 
be pointed out. 

Lincoln, 127 0. G. 3216. 

The common impression, however, that the Examiner should 
ordinarily apply the references to the claims element for ele- 
ment is unwarranted. 

Wickers and Furlong, 127 0. G. 2074. 

Because we are of the opinion that the claims 6 and 7 do 
meet such requirements and to that extent mark an advance 
over the prior art, we decide that such claims should have 
been allowed by the Commissioner of Patents. 
Hill, 1906 C. D. 572, 121 0. G. 340^ 

It is only when the question of novelty is in doubt that the 
fact that the device has gone into commercial use, displacing 
others employed for the same purpose or supplying the place 
of others whose intrinsic defects have prevented their general 
adoption and use, is sufficient to turn the scale in favor of 
•invention. (Potts v. Creager, 155 U. S. 597, 699.) 
Thomson, 1906 C. D. 566, 120 0. G. 2756. 

In examining an application the office should consider that 
by the grant of a patent a patentee is merely put in a position 
to assert his prim.a facie right against infringers who may in 
their defense raise the question of the validity of the patent 
and have the same finally adjudicated in the light of a full 
presentation and consideration of all the evidence attainable 
in respect of anticipation, prior knowledge, use and the like. 
Thomson, 1906 C. D. 566, 120 0. G. 2756. 

Where there was doubt as to the sufficiency of the refer- 
ences and the applicant demonstrated that he had produced 
an apparatus of great utility, held that the doubt should be 
resolved in favor of the applicant's claim. 

Thomson, 1906 C. D. 566, 120 0. G. 2756. 



Rule 66 WANT OP novelty. 238 

It is the duty of the Patent Office to require applicants to 
make their claims clear and definite and therefore it will not 
read limitations into claims pending before it to avoid refer- 
ences, but will require applicant to include them clearly and 
definitely. 

Seely v. Baldwin, 1905 C. D. 316, 117 0. G. 2633. 
One who accomplishes a result by a process which is only 
partially or not at all understood by him has invented noth- 
ing, and can not deprive another, who afterwards discovers 
and proclaims the true principle of the operation, of the 
rights of an inventor. 

Judge Gray's dissenting opinion in Johnson v. Chisholm, 
115 P. E. 633. 
Eeference in analogous art. 

115 P. E. 324. 
The object of the provision of this rule is to enable the 
applicant to understand clearly the position taken by the 
Examiner. 

Pletcher, 1905 C. D. 26, 114 0. 0. 545. 
In general, when the claims are rejected, all grounds of 
rejection should be given in order that the case may be dis- 
posed of upon a single appeal. When, however, claims are 
made to a machine or device the alleged operation of which is 
based on principles in direct conflict with the fundamental 
laws of science and mechanics, it is thought a case is pre- 
sented which should be made an exception. 

Payne, 1904 C. D. 42, 108 0. G. 1049 (see Gibon, 99 
0. 0. 227). 
The first action should be careful and complete and new 
requirements or references should not be necessary except 
when rendered so by applicant's amendments. 
Lewis, 1904 C. D. 16, 108 0. G. 559. 
While a favorable action by an Examiner should be very 
persuasive, it is not binding upon his successor when called 
upon to pass a claim previously acted upon. 
Powler, 1902 C. D. 420, 101 0. G. 1833-4. 
When two claims substantially the same are presented they 
should be rejected and no objection is seen to referring to 
the fact that claims to the real invention have been allowed 
in the case. 

Riley, 1902 C. D. 416, 101 0. G. 1832. 
The reasons why the Examiner thinks the subject matter 
inoperative must be given. 

Gibon, 1902 C. D. 117, 99 0. G. 227. 
It is the purpose of Eules 65 and 66 to lay down a course 



239 WANT OP NOVELTY, Rule 66 

of procedure which will facilitate the speedy prosecution of 
applications and not to permit the applicants to delay such 
prosecutions by insisting on a compli^,nce with the rules on 
the part of the Office without a like compliance on liheir own 
part. 

Sandman, 1901 C. D. 229, 97 0. G. 2532. 
There is no interference in fact between the constructions 
covered in counts for the reason that these counts, though 
identical in language, cover in fact mechanisms which difEer 
materially in construction and operation. 

Goss V. Scott, 1901 C. D. 80, 96 0. G. 842. 
Eule must be read as whole. 

Buck, 1900 C. D. 5, 94 0. G. 222. 
The Examiner rejected the application upon his knowledge 
of public use. On appeal Examiner reversed. Affidavit filed 
by direction of Examiner and application rejected upon the 
affidavit. Eeturn of appeal fee refused because no request 
for affidavit was made by applicant. 

Van Ausdal, 1900 C. D. 74, 91 0. G. 1617. 
Similarities and differences in a machine, process or prod- 
uct do not depend upon mere names of things, words used to 
describe them or immaterial matter by which they may be 
distinguished. 

Palmer Co. v. Lozier, 84 Eed. 669, citing Glue Co. v. 
Upton, 97 U. S. and Bates v. Coe, 98 U. S. 31-42; 
Edgecombe v. Eastman & Houston, 1899 C. D. 207, 
89 0. G. 707. 
While a claim deemed allowable by one Examiner is al- 
ways subject to rejection by Ms successor upon references or 
reasons not before considered and it may be, in exceptional 
cases, on the references previously considered, the spirit of 
Eule 144 would seem to indicate that the favorable action of 
an Examiner should be at least extremely persuasive upon 
his successor. 

Nealon, 1897 C. D. 174, 81 0. G. 1787. 
There being no doubt as to lack of invention in this case, 
there is no room for consideration of the doctrine, which the 
appellant enunciates, that in case of doubt, that doubt should 
be resolved in favor of the applicant. 

Snider, 1894 C. D. 23, 66 0. G. 1309. 
Where a claim was finally rejected and at the same time 
the statement of invention was criticised as being too broad, 
the final rejection was premature and an amendment touching 
the merits may properly be admitted thereafter. 
Klaus, 1893 C. D. 87, 64 0. G. 299. 



Rule 66 WANT OF novelty. 240 

A rejection for "lack of invention'' is in effect a rejection 
for "want of novelty" and the Examiner must cite references 
Tinder Eule 66. , 

Clifl^ord, 1893 C. D. 9, 62 0.. G. 316. 
Practice in the examination of an application prescribed. 

Eastman, 1891 C. D. 178, 57 0. G. 410. 
The matter of examinations and the function of the Ex- 
aminer treated at leno^th by Commissioner Mitchell. 
Rogers, 1889 C. D. 227, 49 0. G. 1361. 
Where two Office letters were written, one containing for- 
mal objections and objections to the merits, and the second 
repealing the former objections to the merits, it was held two 
objections warranting an appeal. 
Mill, 1887 C. D. 92. 
Applicants should be told distinctly and definitely what the 
objections are to their applications, reference to the pencil 
marks on the specification is not sufficient. 
Wilkins, 1883 C. D. 65, 24 0. G. 1271. 
A reference relied on to anticipate the novelty of the inven- 
tion must contain the devices claimed, either in a drawing or 
description; and in either case the invention must be so dis- 
tinctly shown or described as to be a matter of certainty, not 
of inference. 

Herron, 1872 C. D. 135, 1 0. G. 608. 
Irregularities in practice pointed out. Eeferences cited as 
to one claim, and no objections made as to the other in first 
letter ; more particular specification as to invention in one of 
the claims required in the second letter; in the third letter 
first and second claims rejected upon references, additional 
references cited as to first claim, then an appeal to the Board 
taken, then an amendment submitted withdrawing the second 
claim, and first claim rejected. 
Buxton, 72 C. D. 226. 
Such matters and such only as are in point should be 
brought into the case. It is vexatious to all concerned to 
cite a number of random references, all different from each 
other and for that reason impossible to apply to meet a spe- 
cific claim. 

Brownlee, 1872 C. D. 208, 3 0. G. 212. 
There are almost as many different rules of practice in 
finding references and making rejections as there are dif- 
ferent examiners in the Office. 
Moore, 1871 C. D. 250. 



241 WANT OF NOVELTY. RuIg 66 

(2) Propriety of References. 

ISTot only does no reference cited anticipate applicant's 
claim, but no combination of the references can be devised 
which will accomplish this end. 
Hiath, 230 0. G. 335-6. 
Patents filed before, but granted after the application was 
filed, are properly cited. 

Bryder, 178 0. G. 886 (cases) ; see also Lemley v. Dob- 
son-Evans Co., 243 F. E. 391 ; Jackson Cushion Spring 
Co. V. Adler, 243 F. E. 386; Gressling Box Co. v. 
Gumb, 243 0. G. 241. 
Affidavits as to utility and state of the art. In the case of 
Eastwood, 144 0. G. 819, 33 App. D. C. 291 and In re Moore, 
172 0. G. 891, 38 App. D. C. 276, affidavits of this character 
were considered by the Court of Appeals and the court re- 
versed the Office largely in the case made in said affidavits. 
Asst. Com. Mss. Dec. 

See paper bv Mark L. AVhitney, read before the Examin- 
ing Corp "'of U. S. Patent Office, Feb. 15, 1917. 
See notes to Eule 76. 
When requested so to do in good faith the Examiner should 
applv the references. Cases collected. 
Andrews, 172 AO. G. 1889. 
A design patent may anticipate a mechanical patent. 

Williams Bulk Co. v. Nevership Mfg.' Co., 136 Fed. 210. 
In order to constitute a bar the printed and published de- 
scription must exhibit the invention in such full and intelli- 
gible manner as to enable persons skilled in the art to under- 
stand the operation of the invention and to carry it into 
practice (cases). 

Marconi v. Shoemaker, 131 0. G. 1941. 
Applicant's own patent for a process granted less than- two 
years previous to this for the apparatus is not a good refer- 
ence. 

Isaacs & Speed, 130 0. G. 2717. 
Where the specification of a patent cited as an anticipation 
does not state of what material the article is composed it can 
not ordinarilv be assumed to be of any particular material. 
Walters,' 130 0. G. 1483. 
The patent to which attention was called is in a remote 
art, and the Examiner, it is understood, has held the claims 
in issue patentable there over. No such unusual circum- 
stances as will justify the exercise of supervisory authority 
exists. 

Dagett v. Kaufmann, 127 0. G. 3641. 



Rule 66 WANT OF novelty. 242 

"They" (the elements) are all perfectly well known, and if 
not known in the combination described, they are known in 
combinations so analogous that the court is at liberty to judge 
for itself whether there be any invention in using them in 
the exact combination claimed. 

Hill, 1906 C. D. 572, 131 0. G. 340. 
Considering the references and the general state of the art, 
we fully agree Avith the Commissioner, that the record made 
shows nothing more than the work of a skilled mechanic. 
Baker, 1906 C. D. 594, 131 0. G. 1352. 
When a prior combination cited against the combination 
claimed included elements in addition to those used by the 
applicant which result in differences in operation undesirable 
for the purpose of the applicant's device and one of the ele- 
ments of the prior combination is different from the corre- 
sponding element of the applicant's combination, held that 
a patent should not necessarily be refused on account of the 
prior combination. 

Thomson, 1906 C. D. 566, 120 0. G. 2756. 
Separate ■ features may be found in different references. 
Sindingchristensen, 1906 C. D. 88, 120 0. G. 2755. 
A foreign patent is prima facie published at the date it 
indicates. The burden is upon applicant to show to the con- 
trary. 

Beck, 1903 C. D. 277, 105 0. G. 1781. 
An apparatus is not an anticipation of the process of using 
the same. 

Wagner (Ct. of Ap. D. C), 1903 C. D. 629, 105 0. G. 
1783. 
"Indeed, while there are expressions in the opinion of the 
Commissioner of Patents which imply that all which the 
applicant invented was an apparatus and the function of that 
apparatus, yet it is conceded that the apparatus was only 
one of the various modes for giving effect to the process." 
Wagner, 1903 C. D. 629, 105 0. G. 1783. 
In designs the doctrine of double use is not limited to the 
selection of devices in the same or analogous mechanical arts. 
Knothe, 1903 C. D. 42, 102 0. G. 1294. 
Where the Examiner rejects a claim because he thinks its 
subject matter old he should either recite a specific reference 
showing the prior art or make the_ affidavit called for by 
Eule 66. Where the Examiner referred to an accessible device 
as ilhistrating an alleged common practice, no oath required. 
Walker, 1903 C. D. 13, 102 0. G. 465-6. 
To anticipate a process patent, it is necessary not only to 



243 WANT OF NOVELTY. Rule 66 

show that the prior patent might have been used to carry out 
the process, but that such use was contemplated, or at least 
that it would have occurred to any mechanic. It is now too 
late to insist that it would have been suggested to any 
mechanic of ordinary skill and intelligence. 

The Carnegie Steel Co., Limited, v. The Cambria Iron 
Co., 1902 C. D. 592, 99 0. G. 1870. 
It is true that the Jones patent is a simple one and in 
light of present experience it seems strange that none of the 
expert steel makers, who approached so near the consumma- 
tion of their desires, should have failed to take the final step 
which was needed to convert their experiments into an assured 
success. This, however, is but the common history of im- 
portant inventions, the simplicity of which seem to the ordi- 
nary observer to preclude the possibility of their involving the 
exercise of the inventive faculty. 

The Carnegie Steel Company, Limited, v. The Cambria 
Iron Company, 1902 C. D. 592, 99 0. G. 1870d. 
Some of the expressions, taken by themselves, seem to fore- 
shadow the Jones idea; but there was nothing in any of these 
discussions that filled the requirement of the law. (R. S., 
sec. 4886) of a description in a publication sufficient to an- 
ticipate the patent. 

The Carnegie Steel Company, Limited, v. The Cambria 

Iron Company, 1902 C. D. 592, 99 0. G. 1870c, 1870d. 

A process can only be anticipated by a similar process. It 

is not sufficient to show a piece of mechanism by which the 

process might have been performed. 

The Carnegie Steel Co., Limited, v. The Cambria Iron 
Co. Works, 1902 C. D. 592. 
Eeiection upon two references. An ozone producer con- 
sisting of a high frequency apparatus and an ozonizer is 
anticipated by the same high frequency apparatus and the 
same ozonizer, separately. 

Varley, 1902 C. D. 172, 99 0. G. 1621. 
That which infringes if later anticipates if earlier. See 
Miller v. Eagle Mfg. Co., 95 C. D. 161, 80 0. G. 661, and 
numerous authorities cited. 

Steck, 1902 C. D. 9, 98 0. G. 228. 
Where differences in degree cause a different mode of opera- 
tion. 

Potts V. Creager, 1900 C. D. 39, 90 0. G. 2134; and 
McBerty v. Cook, 1900 C. D. 248, 90 0. G. 2295. 
When a foreign patent is cited the burden of proof is upon 
applicant to show that it bears a wrong date. 

Hummel v. Tingley, 1900 C. D. 22, 90 0. G. 959-960. 



Rule 66 WANT OF novelty. 24r4 

Combination held to be old, if it is clear that by assembling 
these elements in ont structure no new effect which is dif- 
ferent or more than the sum of the effects of the separate 
elements is secured. 

Perkins, 1899 C. D. 141, 88 0. G. 548. 
Complete anticipation is rare and to reject a claim on the 
ground that it is substantially met by a reference is prac- 
tically the same as to reject it on the ground of lack of inven- 
tion in view of the reference, such difference as remains not 
involvins: invention. 

Ferguson, 1894 C. D. 6, 66 0. G. 651. 
jSTovelty is not negatived by any prior patent or printed 
publication, unless the information contained is full enough 
and precise enough to enable any person skilled in the art 
to which it relates to perform the process or make the thing 
covered by the patent sought to be anticipated. Foreign pat- 
ent as reference. 

Deprez & Carpenter v. Bernstein v. Hunter, Gaulard and 
Gibbs, 1891 C. D. 53, 54 0. G. 1711. 
After a patent is granted for an article described as made 
by causing it to pass through a certain method of operation 
to produce it the inventor can not afterwards on independent 
application secure a patent for the method or process of cut- 
ting away the metal and then binding it, so as to produce 
the identical article covered by the previous patent, which 
article was described in that patent as produced by the method 
or process sought to be covered by taking out the second 
patent. 

The Mosler Safe & Lock Co. v. Hosier B. & Co., 1888 
C. D. 420, 43 0. G. 1115. 
An English provisional specification should be referred to 
as a publication and not a patent. 

Maynard, 1870 C. D. 54; Cochran, 1869 C. D. 60; Lauder 
V. Croswell, 1879 C. D. 177; 16 0. G. 405; Lowry, 
1869 C. D. 85. 
A combination is not anticipated by its elements sepa- 
ratelv. 

Stone, 1873 C. D. 105, 4 0. G. 54. 
When a new use of a thing produces an important effect 
never before produced or develops or makes practical some 
new property of matter not previously known, the new use is 
not analogous to the former uses, and therefore, the novelty 
of the mere agent is immaterial. 
Hawes, 1871 C. D. 325. 
A patent should not be granted with broad claims after 



245 WANT OF NOVELTY. Rule 66 

one for the same invention with narrow claims has been issued 
to the same applicant. 
Edison, 1 0. G. 263. 
An Examiner is not limited in his inquiry into the nov- 
elty of an invention on which a patent is asked, to investiga- 
tion in the particular subdivision of inventions of which he 
has charge. 

Burnham, 1872 C. D. 26, 1 0. G. 164. 
References should be limited to things of a kindred nature 
and there should be some analogy between the use and the 
result of the device in question and the reference upon which 
it is rejected. 

Hawes, 1871 C. D. 255; Moore, 1871 C. D. 249; for 
example, see Lesnew, 1871 C. D. 204; Hillard, 1871 
C. D. 179; Williams, 1871 C. D. 177. 

(3) Action hy the Office. 

A rejection of the claims as anticipated by references is not 
objectionable as throwing a cloud on the title. 
McPherson, 196 0. G. 1051-1052. 
When a clear issue has been reached and it is evident that 
applicant understands the application of the references, no 
further explanation of the references is necessary. 
Kelley, 183 0. G. 220. 
A reference to a decision of the Commissioner held suf- 
ficientlv definite. 

Patterson, 178 0. G. 885. 
An acting by the German Office cited, considered, but not 
followed. 

Maas, 180 0. G. 1138. 

In case of ordinary doubt, the policy of the patent sys- 
tem, as customarily maintained in the Patent Office, has been 
to give the applicant the benefit thereof because no absolute 
right of property is conferred by the grant of a patent. 
(Thomson, 26 D. C. 419-425.) 

Moore, 178 0. G. 891; see 177 0. G. 772. 
When the Examiner required applicant to diminish the 
number of claims and grouped the same in accordance with 
the practice in Ex parte Kadow, 154 0. G. 1412, and Ex 
parte Chapman, 120 0. G. 446, held that he should have also 
acted upon the merits of each group of claims. 
Both, 182 0. G. 974. 
The Examiner should reject the claim if he thinks the 
structure recited is insufficient to sustain the whereby clause. 
Hoge, 173 0. G. 1081. 



Rule 6C WANT OF NOVELTY. 246 

If the Commissioner recommends certain claims, only these 
claims should be considered. 

Selden, 164 0. G. 741, 36 App. D. C. 428; 173 0. G. 
1080. 

Claims should not be allowed merely because they present 
a multitude of elements all of which do not appear in one 
or two or even more references, 
Fagan, 163 0. G. 538-539. 

It is the duty of the Examiner to consider not only the 
claims but the invention disclosed. If he is of the opinion 
that an application discloses no invention over the references, 
it is perfectly proper for him to so state. 
Fox, 157 0. G. 485. 

When Hall applied for his patent he neither conceived nor 
disclosed any such retardant action of clay, or indeed made 
clay an element in any claim and that the subsequent intro- 
duction thereof into the patent was suggested as a mere 
theory to overcome valid objections to the grant of the patent. 
We are satisfied that this theory was neither based on pre- 
vious experience or proved by subsequent devtlopments. Ee- 
jection was right. 

Casern Co. v. Collins Co., 155 0. G. 554. 

The Examiners-in-Chief on appeal made a recommendation 
that one claim be rejected upon a reference not cited by the 
Primary Examiner. The Primary Examiner adopted such 
suggestion but refused to receive a general amendment to the 
case approved. "If, however, the applicant will present an 
amendment either amending claim 6 or presenting a claim 
or claims limited to the subject matter covered by that claim, 
the same mav be entered and considered. 

Dietrich," 143 0. G. 568; 157 0. G. 1344; 170 0. G. 483. 

The issue being strictly formed and the amendment to 
claims not being substantial, the request at the end of appli- 
cant's argument that if a favorable decision could not be 
given there should be a final rejection, should be complied 
with. 

Marshall, 139 0. G. 198. 

Where an Examiner finds it necessary to give reasons ex- 
plaining the application of a reference, a final rejection should 
not be entered in the same letter where the reasons have been 
cited for the first time. 

Jackson, 133 0. G. 1334. 

It is a liberal practice that permits a party to extend the 
prosecution of a case and increase the work of the Office to 



247 WANT OF NOVELTY, Rule 66 

the detriment of other applicants by presenting new claims 
after action by the Office, which are not responsive to the 
Office action, without showing why they were not earlier pre- 
sented. Inhere are good reasons why this practice should be 
continued, but when amendments of this character are made 
applicant should assist the Office by presenting the reasons 
why they believe the new claims allowable. 
Richards, 124 0. G. 2534. 
Final action on a case marks the close, not merely of the 
consideration of the particular claims before the Office, but 
the close of the consideration of any claims in that application. 
Casselman, 116 0. G. 2012. 
Applicant should not be cut ofE from the right of amend- 
ment in such a summary way in a complicated case like this, 
as it is the policy of the Office to give applicants every rea- 
sonable opportunity. 

Stuart, 109 0. G. 1069. 
The Office action is not complete until proper data is given 
to enable applicant to judge of the propriety of the action. 
Stead, 107 0. G. 834. 
A final rejection requiring a showing under this rule may 
be made before all formal matters are disposed of. 
Severy, 97 0. G. 2745. 
It is the fact of a second rejection and not the language of 
the letter of rejection that closes the case. However, the 
Examiners are directed hereafter to definitely state that the 
claim is finally rejected. 

Kendall, 1900 C. D. 174, 93 0. G. 754. 
Where the case is simple in its nature, where the applicant 
has an attorney of skill and experience, where the Examiner 
clearly rejects all the claims upon certain patents cited, and 
applicant "clearly understands that the Examiner in charge 
considers that the entire case lacks invention and such ground 
of rejection is accepted fully," a basis does not exist for 
further action under Eule 66. 

McGarrell, 1892 C. D. 45, 58 0. G. 1256. 
Material amendments in matter of substance made in good 
faith can not lawfully be refused consideration by the Office 
at any time before the issuance of the patent. 

Winchester, 80 C. D. 92 ; see, however, Thurmond, 1886 
C. D. 30, 37 0. G. 217. 
No more than two rejections can be had for the same 
reason. 

Evarts, 1874 C. D. 39. 
In entering a final rejection there is no impropriety in 



Rule 66 WANT OF novelty. 248 

arguing the applicability of the references of record anew 
provided the new grounds of rejection are cited. In this 
case, however, the rejection set forth for the first time the 
exact grounds upon which the claims were held unpatentable. 
Examination not closed. 

Mygatt, 184 0. G. 801. 

(4) Action by the Office as Constituting a Proper Final 
Rejection or Reopening the Case. 

See Eules 77 and 171. 

Although there were but two actions it is clear that an 
issue has been reached between the Examiner and the appli- 
cant. ISTo further action necessary. 
McPherson, 196 0. G. 1051-1053. 

Stating his reasons for rejection more fully does not re- 
open a case. 

Movley, Jr., 185 0. G. 1379. 

If the letter ends, the applicant may consider this action 
final if he wishes. This does not close the case and the 
applicant is entitled to further amend. 
Mygatt, 185 0. G. 828. 

As a general rule a final rejection should not be given on 
the second action on the merits. 
Mygatt, 185 0. G. 838. 

The response made to the final rejection was clearly a suf- 
ficient response to a rejection upon new grounds. The 
Examiner is therefore directed to consider the application on 
its merits in view of the argument. 
Mygatt, 184 0. G. 803. 

Eule is applicable to design applications. 
Beltendorf, 184 0. G. 801. 

Examiner required an explanation, which being given un- 
der head of remarks, was required to be inserted in specifica- 
tion. A final rejection proper when this was not done. 
Dean, 177 0. G. 1395. 

August 13, 1910, Examiner held that claims 5 and 6 were 
allowable after correction and finally rejected other claims. 

January 3, 1911, amendment cancelling the finally rejected 
claims and adding three new ones. 

Entry refused. 

August 31, amendment cancelling claims offered, case aban- 
doned. 

After the case was finally rejected applicant should, 
within one year from the date thereof, either have cancelled 



249 WANT OF NOVELTY. Rule 66 

the claims, taken an appeal, or taken steps which resulted 
in having that final rejection set aside as premature. 
Dietricks, 174 0. G. 829. 

Whether the action of the Office was such as to confer the 
right to amend is one that may not be controlled by manda- 
mus. 

Lang V. Moore, Com., 172 0. G. 834. 

A criticism of the theory of operation of the device that 
does not amount to holding it inoperative does not reopen a 
case. 

Hardy, Jr., 161 0. G. 268. 

However, if it is pointed out that the claims do not contain 
the matter relied on and if they did they would be antici- 
pated b}^ a reference of record, this does not constitute the 
citation of a new reference. 
Scott, 166 0. G. 985. 

After a case is ready for appeal if a new reference is cited 
the applicant may continue his appeal in view of such amend- 
ment or to further prosecute the case before the Primary 
Examiner. (Mevey, 56 0. G. 805.) 
Scott, 166 0. ^G. 85. 

Two claims rejected on three references, one claim with- 
drawn, the other claim rejected in view of said references. 
Good final rejection. 

Gentry, 16f 0. G. 537. 

Applicant was entitled to have the claims considered and 
the reasons of rejection fully stated, and such action should 
now be taken. 

Pledger, Jr., & Campbell, 157 0. G. 486. 

After final rejection no affidavit under Eule 75 will be re- 
ceived. (Berg, 120 0. G. 903.) 
Eomunder, 157 0. G. 209. 

Following the interference certain previously allowed claims 
were rejected because applicant was not the first inventor 
thereof, as disclosed by the interference proceeding. Such 
rejection is based upon a new ground and is a new reason 
for rejection, in Yiew of which applicant has the right to 
amend under Rules 65 and 68 and section 4903 of the Ee- 
vised Statutes. 

Klepelko, 126.0. G. 387. 

Where the Examiner acts on formal objections after the 
final rejection of the claims, the applicant is entitled to a 
year from the Examiner's action in which to cure the objec- 
tions and in the absence of any rule or practice to the con- 
trary he should likewise be allowed this year in which to 



Eule 66 WANT OF novelty. 250 

appeal to the Examiners-in-Chief or to cancel the, rejected 
claims. 

Thomas, 134 0. G. 623. 
The mere fact that the letter closing primary consideration 
of the case stated the grounds of rejection at greater length 
than they had been before stated does not present new rea- 
sons for rejection. The final rejection was in order and was 
properly given. 

Plmdall, 122 0. G. 1396. 
A petition to set aside a final rejection dismissed as pre- 
mature where no request had been made of the Primary Ex- 
aminer to withdraw that rejection. 
Lawton, 122 0. G. 259. 
A more extended statement of grounds of decision does 
not reopen case. 

Kinney & Schultz, 121 0. G. 2325. 
Application rejected upon two references. Affidavit under 
Eule 75 filed to overcome one reference. By refusing con- 
sideration of the affidavit because the other reference was 
sufficient in itself, the Examiner does not reopen the case. 
Berg, 120 0. G. 903. 
The applicant is clearly entitled to be informed which 
claims previously rejected are the same in substance as those 
placed under final rejection. 

But the giving this information does not relieve the case 
from final rejection. 

Thayer, 118 0. G. 2252. 
The withdrawal of a ground of rejection does not reopen 
a case. 

Wagner, 118 0. G. 1684. 
While the explanatory matter in the letter of final rejection 
states more explicitly the grounds for refusing the reissue in 
the form requested, the original letter nevertheless stated 
these grounds with such clearness that the applicant could 
have intelligently planned his course of action. Eejection 
proper. 

Wagner, 118 0. G. 1684. 
An applicant should have an opportunity to amend after he 
understands or has had an opportunity to understand thor- 
oughly the Examiner's position. 
Greth, 116 0. G. 2532. 
After rejection claims canceled. A requirement of amend- 
ment to the specification did not reopen the case to admit 
new claims. 

Casselman, 116 0. G. 2012. 



251 WANT OF NOVELTY. Rule 66 

May amend as often as the Examiner presents new refer- 
ences or reasons for rejection against any of the claims. 
Booth, 113 0. G. 3216. 
It is not sufficient to justify a final rejection that a patent 
has been cited against other claims; but it must appear that 
the Examiner and the applicant have clearly reached an issue 
as to the pertinency of the patent as regards the specific claim 
said to be anticipated by it. 

The pertinency of references if not obvious should be 
pointed out. 

Booth, 113 0. G. 3216. 
After final rejection Examiner received and entered ' an 
amendment containing an allowable claim. Held that this 
did not reopen the case for further amendment. The prac- 
tice should be analogous to that under Eule 78. 
Meacham, 113 0. G. 1417. 
If the Examiner acts upon a suggestion of the Examiner- 
in-Chief it is an action on his own motion and restores appli- 
cant's right to a reconsideration. 
Burrowes, 110 0. G. 599. 
A final rejection was proper although a reference cited in 
the action before the last and not cited in the last action was 
again cited. 

Minich, 107 0. G. 1971. 
If the last action finally rejecting the application was in- 
formal an amendment is a proper action. 
Goldman, 100 0. G. 234. 
If it is intended to close the matter the Examiner should 
use the words "finally rejected." 

Gammons, 98 0. G. 2171; Byrnes, 97 0. G. 191. Cita- 
tion of new references opens case. Gammons, 98 0. G. 
2171; Lawton, 97 0. G. 187. 
A proposed amendment was offered to a case under final 
rejection, the Examiner refused to enter it because it did not 
comply with the second paragraph of the rule, and at the 
same time cited references alleged to anticipate new claims. 
Held that by citing new references the Examiner opened the 
case. 

Lawton, 1901 C. D. 143, 97 0. G. 187-188. 
Gray, 1889 C. D. 91, 46 0. G. 1377. 
After the first rejection the applicant may insist upon his 
claim as presented. If the Examiner reaffirms his former 
decision without supporting it with fresh references, the re- 
jection is final as there is no remedy but appeal. But if the 
Examiner gives new references the applicant has a right to 



Rule 66 WANT OF novelty. 252 

reply to them, or to amend his application by reason of them 
if he desires to do so. 

Appleton, 1869 C. D. 8. 

(5) New Matter. 

See Enle 70. 

If the Examiner is of the opinion that the amendment pre- 
sents new matter he should reject all claims affected thereby, 
and applicant may appeal to the Examiners-in-Chief. 
Smyth, 114 0. G. 763. 

When new matter is introduced the whole application should 
be examined and the application rejected because of such new 
matter. 

Soley, 1900 C. D. 71, 91 0. G. 1616. 

If in the opinion of the Examiner, the proposed amend- 
ment to the drawing involves new matter, the changes in the 
drawing should not be allowed until the question of new 
matter has been determined, but claims based on this matter 
should be considered and rejected on the ground of departure 
and for all other reasons that are applicable, so that all mat- 
ters mav be settled at one appeal. 

Ernest, 1896 C. D. 33, 76 0. G. 1417. 

If in the opinion of the Examiner the application as 
amended involves a departure from the original invention 
such want of idetititv would furnish ground for rejection. 
Bennett, 1886 C. D. 11, 35 0. G. 1003. 

(6) Rejection on Applicant's Oivn Patent or Application. 

Applicant's own patent for a process granted less than two 
vears previous to this for the apparatus is not a good reference. 
Isaacs & Speed, 130 0. G. 2717. 
Anticipation by one's own patent and estoppel in previous 
record. 

Is^ewark Spring Mattress Co. v. Eyan, 103 F. E. 693. 
It is proper in some cases to reject a claim because of the 
alloAvance to the same party of other claims. 

Eilev, 1903 C. D. 416, 101 0. G. 1833; Leonius, 1903 
C." D. 136, 103 0. G. 1164. 
It is suggested that there is not proof that the Bundy who 
filed the earlier application is the same party as the Bundy 
who filed the later case. There is, however, prima facie evi- 
dence that they are the same such as will justify placing the 
burden of proof upon Eumbarger. If they are not the same, 
Eumbarger may show it by the proofs. 

Bundy v. Eumbarger, ^1900 C. D. 145, 93 0. G. 3003. 



253 WANT OF NOVELTY, Rule 66 

It is well settled that it is- proper under certain circum- 
stances to reject the claims in an application on an allowed 
application filed by the same party. 

Osborne, 1900 C. D. 137, 93 0. G. 1797. 
Eeferences to applicant's previous patent. 

Jones v. Larter, 1900 C. D. 111,^ 92 0. G. 383. 
Eejection on patent to same inventor. 
Edison, 1891 C. D. 1, 54 0. G. 263. 
The formal abandonment of an application should not be 
required as a condition precedent to the allowance of another 
application of the same inventor pending concurrently and in 
condition for allowance, nor should the Examiner require the 
erasure of any claim which would be allowed if no other appli- 
cation awaited consideration. The true course to be pursued 
is that pointed out in Ex parte Gaboury, 1886 C. D. 28, 37 
0. G. 217. 

Feister, 1890 C. D. 167, 53 O. G. 1089. 
Anticipation bv one's own patent. 

Woodward, 1890 C. D. 169, 53 0. G. 1090. 
Anticipation by one's own patent. Application pending at 
the same time. 

Feister, 1890 C. D. 167, 53 0. G. 1089. 
Where the invention described and not claimed in a prior 
patent to the same inventor which might have been lawfully 
claimed in the first patent there is a presumption of dedica- 
tion from the failure to make reservation or to file a con- 
current application. 

Biggs, 1890 C. D. 32, 50 0. G. 1130. 
A claim in an application is not anticipated by a patent to 
applicant showing but not claiming the invention when such 
invention could not have been properly claimed in said patent. 
Johnston, 1889 C. D. 130, 46 0. G. 1641. 
The question we have to decide is whether the description 
of another invention in a prior patent by the same inventor 
forfeits his rights to take out a subsequent patent for such 
invention. I do not understand that the Supreme Court has 
held that such prior description is a dedication to the public 
of the second invention. Judge Colt in 

Eastern Paper Bag Co. v. Standard Paper Bag Co., 1887 
C. D. 537, 41 0. G. 231, and cases cited. 
A patent for either a machine or process will not bar a 
patent for the one of said inventions not patented provided 
the statutory forfeiture of two years use has not been. 

Eastern Paper Bag Co. v. Standard Paper Bag Co., 1887 
C. D. 537, 41 0. G. 331. 



Rule 66 WANT OF novelty. 254 

A .failure to file a disclaimer under Eule 42 does not make 
the patent issued upon one application a bar to the other. 
Eoberts, 1887 C. D. 61, 40 0. G. 573. 
It is undoubtedly true that when a patent issued for an 
invention, all of which is shown but only part of which is 
claimed, there is a dedication to the public of that part which 
is unclaimed, 

Eoberts, 1887 C. D. 61, 40 0. G. 573. 
A patent should not issue upon an application which is not 
properly a division of the subject matter of a patent to the 
same party, even though the application upon which the pat- 
ent was granted was concurrent. 

Lowe, 1870 C. D. 39, 20 0. G. 176; Eansom, 1887 C. 

D. 22, 39 0. G. 119; Eoberts, 1887 C. D. 613, 40 0. 

G. 573; Holt, 1884 C. D. 43, 29 0. G. 171. 

The fact that an applicant has two applications pending for 

the same thing is no reason for the rejection of the second 

application unless the first has been passed to issue or a 

patent srranted upon it. 

Gaboury, 1886 C. D. 28, 37 0. G. 217. 
If two applications are pending at the same time a patent 
granted upon the first, which shows but does not claim the 
subject matter of the second, will not bar a patent upon said 
second application. 

Emerson, 1880 C. D. 143, 17 0. G. 1451 ; Eoberts, 1887 

C. D. 61, 40 0. G. 573; Derby, 1884 C. D. 21, 26 0. 

G. 1208; Holt, 1884 C. D. 43, 29 0. G. 171. 

If two applications are not pending at the same time, a 

patent granted upon the first showing but not claiming the 

subject matter of the second, will not bar a patent upon 

second application if a reservation clause as to such matter 

is inserted in the application upon which the patent is granted. 

Atwood, 1869 C. D. 98; Derby, 1884 C. D. 21, 26 0. G. 

1208; Contra Eohm, 1883 C. D. 106, 25 0. G. 1190; 

Long, 1883 C. D. 104, 25 0. G. 1189. 

"A question is made by the defendants whether an inventor 

is not to be presumed to abandon his design when he exhibits 

it in the drawings of a mechanical patent. I do not see why 

this consequence should follow until the design has been in 

use for two years, but I do not decide this point . . ." 

Burton v. Greenville, 1880 C. D. 602. 

When two applications by the same applicant are pending 

at the same time, and a patent is issued upon the application 

last filed, the claims which might have been inserted in either 

application when both were pending can not be inserted in the 



255 WANT OF NOVELTY. Rule 6b 

application first filed, but must be inserted, if at all, in the 
reissue of the patent. Or, if the applications are not pending 
at the same time. 

Loring v. Hall, 1879 C. D. 8, 15 0. G. 471; Emerson, 

1879 C. D. 330, 12 0. G. 1232; Arkell, 1877 C. D. 

73, 11 0. G. 1111; Stempel, 1879 C. D. 161, 16 0. G. 

316. 

I am much inclined to think that the mere fact that a new 

article is shown in the drawing of a patent for a machine 

would not of itself be an abandonment of the new article 

which would properly be the subject of a different patent, 

until the statutory forfeiture of use for two years had been 

incurred. 

Hatch V. Moffitt, 15 P. E. 255. 

(7) Action of Office as to Unity or Diversity of Invention. 

See Eule 42. 

Pinal rejections are given in cases where division is re- 
quired without closing the case to amendment. 

Sanders v. Howthorne v. Hoyt, 1906 C. D. 467, 125 0. 
G. 1347. 
Applicant must comply with the requirement for division 
or appeal to the Examiners-in-Chief. 

Wallace, 1906 C. D. 461, 125 0. G. 992. 
"They" "(the courts)" do not look with favor upon the 
refinements of division which lead to many patents being 
issued for various improvements incorporated upon a single 
device. 

Briede, 1906 C. D. 677, 123 0. G. 322-324. 
The facts of each case must be considered, with the burden 
upon the applicant who asserts that two statutory inventions 
are one unitary invention. We are confirmed in this conclu- 
sion by the utterances of the court in the Steinmetz case. 
Erasch, 1906 C. D. 648, 122 0. G. 1048. 
A requirement for division is to be treated something like 
a demurrer upon which the allegations of fact are assumed 
to be true. The things claimed are assumed to be inventions 
for the purpose under consideration and the only question is 
whether these things are so closely related as to warrant their 
inclusion in one application. The assumption of course is not 
to be continued after the question of division is settled and 
the question of patentability of the several claims is taken up. 
Steinmetz, 117 0. G. 901. 
Before refusing to examine a new claim because of alleged 
new matter the question of division should be settled. 
Lawley, 1904 C. D. 539, 113 0. G. 1967. 



Rule 66 WANT OF novelty. 256 

The Examiner will not be directed to select the invention to 
be retained. 

This is left to applicant except where an amendment is 
presented which necessitates a requirement of division. In 
this case applicant is required to cancel claims upon which an 
examination has not been made. (Sille, 110 0. Gr. 1738.) 
Tuttle, 1904 C. D. 537, 113 0. G. 1967. 
An amendment which in the opinion of the Examiner would 
require division if offered, should nevertheless be entered, 
since the appeal is now to the Examiners-in-Chief. 
Deane, 1904 C. D. 330, 111 0. G. 1937. 
The practice of refusing to enter amendments necessitating 
division was based upon the practice of considering the mat- 
ter upon interlocutory petition, and it has no application now, 
since the question of division is appealable. 
Selle, 1904 C. D. 221, 110 0. G. 1728. 
Good practice requires that a requirement for division be 
made at the earliest date upon which it appears that divi- 
sion is necessary. 

Lewis, 1904 C. D. 16, 108 0. G. 550; Baer, 1904 C. D. 
117, 109 0. G. 1609. 
An amendment which if entered would require division 
should be refused notwithstanding the fact that it was pre- 
sented before action by the Office. 

Dubern, 1904 C. D. 61, 108 0. G. 1588. 
An amendment that would require division should not be 
entered. 

Murmann, 1900 C. D. 183, 93 0. G. 1721; Mitzger, 1902 
C. D. 407, 101 0. G. 1612; Osborne, 1902 C. D. 100, 
98 0. G. 2365; Gaily, 1903 C. D. 480, 107 0. G. 1660. 
Applicant given the benefit of a doubt while separate appli- 
cations for these distinct inventions may be warranted by the 
classification, it does not of itself preclude the prosecution of 
claims for these distinct inventions in the same application. 
Ilhlig, 1903 C. D. 300, 106 0. G. 541. 
The suggestion that an amendment should not be entered 
because it would immediately necessitate the requirement for 
division is not applicable for the reason that the rejection of 
the claims called for an amendment to them. The amend- 
ment has reference solely to the rejection. 
Beck, 105 0. G. 1782. 
The question of division is one of form and not of merits, 
and according to the provisions of Eule 42, should ordinarily 
be settled before action on the merits. 

CoUamore & Kerst, 1903 C. D. 241, 105 0. G. 746. 



257 WANT OF NOVELTY. Eule 66 

The action in this case rejecting certain claims which the 
Examiner regarded as covering one form of the invention on 
references and then rejecting other claims on the ground 
merely that they cover a modification is thought to be er- 
roneous. 

Collamore & Kerst, 1903 C. D. 241, 105 0. G. 746. 
An action on the merits with a requirement of division pro- 
hibited by Eule 42. 

MacKaye, 1903 C. D. 112, 103 0. G. 888-9. 
The order 83 0. G-. 301, requiring a cursory examination, 
approved. This is not an action on the merits. This is not 
applicant's right, but a courtesy extended bv the Office. • 
MacKaye, 1903 C. D. 112,' 103 0. G. 888-9. 
The Examiner is required to give ' his reasons. Question 
of division. 

Tyson, 1902 C. D. 476, 101 0. G. 3106. 
A requirement of division is not an action on the merits. 

Erasch, 1902 C. D. 560, 100 0. G. 1977. 
In requiring that the Examiner should cite references against 
both inventions means such references as he has in mind. If 
he cites none it is to be supposed that he has none in mind. 
Albert, 1901 C. D. 66, 96 0. G. 426. 
Where a division is required the Examiner should cite such 
references as are in his mind. (830. G. 301) but applicant 
is not authorized" to rely on such action. 

Eandall & Luck, 1901 C. D. 47, 95 0. G. 2063. 
Where a division is required the Examiner (apparently) 
should cite the state of the art in reference to both inventions. 
Thurman, 1901 C. D. 30, 93 0. G. 1721. 
An objection to a claim for a design tbat it is not single, 
but on the contrary, calls for three separate articles aggre- 
gated, is one pertaining to the merits and should therefore 
have been a rejection. 

Myres, 1893 C. D. 103, 64 0. G. 859. 
If the Examiner is of the opinion that there is a want of 
divisibility of invention between the claims of an application 
and the claims of a patent to the same applicant, both appli- 
cations having been pending concurrently, he should reject 
the claim for that reason. 

Appeal is to Examiners-in-Chief. 
Eeisler, 1892 C. D. 203, 61 0. G. 152. 
A second invention can not be introduced as a modification 
of the first. 

Bogart, 1876 C. D. 162, 10 0. G. 113. 



Rule 67 EX PAETE CASES. 258 

AVhere an application is amended so as to eliminate one 
invention there would seem to be no objection to retaining all 
the figures of the drawing, and the description thereof in the 
body of the specification, unless other applications are to be 
made on this subject matter. 

' Shepard, 1872 C. D. 244, 3 0. G. 522. 

The Examiner should require a division before an exami- 
nation is made. 

Eice, 1874 G. D. 44, 5 0. G. 522; Pastor Perez de la 
Sala, 1888 C. D. 3, 42 0. G. 95. 

(8) Additional Cases. 

Hallowell, 1903 C. D. 268, 105 0. G. 1533-34; Scriven, 
Ex parte, 1891 C. D. 204, 57 0. G. 1127-28; Opdvke, 
1890 C. D. 39, 50 0. G. 1293 (see note to Eule 67) ; 
Luber, 1894 C. D. 47, 67 0. G. 529 (see Eule 70) ; 
Knudsen, 1895 C. D. 29, 72 0. G. 589 (see note to 
Eule 37) ; Cahill, 1893 C. D. 78, 63 0. G. 1815 (see 
note to Eule 37); Miller, 139 0. G. 730; White, 134 
0. G. 2027 (see note to Eule 34). 

Rule 67. Adverse Decisions on Preliminary Questions 
in Ex Parte Cases. 

Whenever, in the treatment of an ex parte applica- 
tion, an adverse decision is made upon any prelimi- 
nary or intermediate question, without the rejection 
of any claim, notice thereof, together with the reasons 
therefor, will be given to the applicant, in order that 
he may judge of the propriety of the action. If, after 
receiving this notice, he traverse the propriety of the 
action, the matter will be reconsidered. 

HISTORY. 

This rule introduced in 1879. 
See notes to Eule 64. 

CONSTRUCTIONS. 

Where an applicant in good faith, by amendment, attempts 
to cure formal objections, if the amendments are not satis- 
factory, the Examiner should so state in specific language. 
Lungstrom, 1905 C. D. 541, 119 0. G. 2235. 



259 EX PARTE CASES. Rule 67 

After several objections on the groimd of insufficiency of 
disclosure, the claims should be rejected. 

Stevens, 1905 C. D. 503, 119 0. G. 1358. 
Where an applicant secures a dissolution of an interference 
upon his allegation that the claims are not patentable, held 
that he should be required to cancel the claims. To reject 
the claims implies that there is an open question as to appli- 
cant's right, and there is not a question in fact. 
Milfer, 116 0. G. 3533. 
Where an applicant does not desire suspension of his appli- 
cation to await the termination of an interference, proceedings 
in which another application of the same applicant is in- 
volved, the Examiner should reject the claims in the case 
under consideration on the interference issue: 

McCormick, 1904 C. D. 575, 113 0. G. 3508. 
The requirement of a supplemental oath (Matthes, 101 0. 
G. 3108, 1903 C. D. 484) should be disposed of before an 
appeal is forwarded. 

Teller, 1904 C. D. 468, 113 0. G. 548-549. 
When applicant fails to make a claim suggested under 
Eule 96 within the time limited, when the claim is pre- 
sented, it should be entered and rejected. 
Swift, 1904. C. D. 365, 111 0. G. 3495. 
If the Examiner is of the opinion that the device is in- 
operative, he should reject it for this reason. It is irregular 
to require a model (Stocker, 1903 C. D. 53, 968 0. G. 1705). 
Beath, 1904 C. D. 343, 111 0. G. 3330. 
Only one species may be prosecuted in one application. 
The Examiner does not waive his right to object upon such 
a ground by inadvertently receiving and acting upon claims 
to two species. 

1904 C. D. 170, 110 0. G. 857. 
The Examiner is undoubtedly authorized to raise and deter- 
mine the question of inoperativeness. 

Brisband, 1903 C. D. 459, 107 0. G. 1097. 
But must give his reasons for such an opinion. 

Gibon, 1903 C. D. 117. 
If claim.s are involved in an interference on a separate ap- 
plication action suspended awaiting termination of such inter- 
ference. 

Eobinson, 1903 C. D. 433, 101 0. G. 3079. 
An applicant should not be required to elect between two 
claims to the same invention unless those claims are substan- 
tially the same. The allegation that they are not patentably 
different is no ground for the requirement. 
Lahue, 1903 C. D. 357, 101 0. G. 448. 



Rule 67 EX PARTE CASES. 260 

The applicant was defeated in an interference proceeding 
and filed a new application with the same claims in it. The 
Examiner refused to consider it res adjudicata. Applicant 
contended that admitting his opponent's patent was a part 
of the prior art, still he was entitled to a patent. It was 
held that his application should be acted on. 

Schiipphaus, 1903 C. D. 339, 100 0. G. 2775. 
In case a division is required references are recited cur- 
sorily, but this does not constitute an action on the merits 
generally, but may do so if it is made to appear distinctly. 
Goldman, 1903 C. D. 338, 100 0. G. 334. 
The Examiner ruled that a heavier-than-air flying machine 
was necessarily inoperative. The Commissioner said: 

"It is the very purpose of invention to do that which had 
not been done before, and this Office can not consistently 
allege a reason for refusing a patent the mere fact that no 
one heretofore has succeeded in accomplishing the result." 
Gibon, 1903 C. D. 117, 99 0. G. 337. 
When the invention is not properly claimable as a process, 
it is the duty of the Office tribunals to so hold if they be of 
that opinion. 

Trevette, 1901 C. D. 170, 97 0, G. 1173. 
Claims refused admission because they were for aggregations 
and other reasons. 

Brownell, 1901 C. D. 30, 94 0. G. 988. 
Claims merely aggregating two independent inventions 
should be rejected before requiring a division. 
Griffith, 1898 C. D. 333, 85 0. G. 936. 
The degree of utility of a device is unimportant in deter- 
mining whether a device be patentable. If the invention is 
not frivolous or prejudicial and has any degree of usefulness, 
then within the meaning of the law it is useful and may be 
patented. The degree of utility is not a question for the 
Patent Office to arbitrarily determine. 

Sanche, 1897 C. D. 33, 80 0. G. 185. 
Where the art as claimed omits a step necessary to its law- 
ful practice, such omission is a proper ground of rejection. 
Turner, 1894 C. D. 36, 66 0. G. 1595. 
It is proper sometimes to stand upon a mere legal opinion, 
but it is only advisable in the absence of any other ground of 
adverse action. When there is a reference "a simple dictum" 
should not be resorted to. 

Fairbanks v. Eobinson, 1873 C. D. 13, 3 0. G. 65. 
It is improper to require the elimination of a claim or 



261 EIGHT TO AMEND. Rule 68 

claims because they present illegitimate combinations, the 
claims should be rejected. 

Wiard, 1890 C. D. 53, 51 0. G. 155. 
Where the Examiner had objected to a claim because of its 
undue breadth only and declined to further consider it upon 
the merits until it had been restricted in form, held that the 
reason given was a reason why the claim should be rejected 
and not why an examination should be refused. 

Opdyke, 1890 C. D. 39, 50 0. G. 1293. 
The Patent Office has jurisdiction to see that the require- 
ments of the statute, as to the specification and claims shall 
be complied with. 

Paigel, 1887 C. D. 71, 40 0. G. 807. 
Material amendments in matter of substance made in good 
faith can not lawfully be refused consideration by the Office 
at any time before the issuance of the patent. Immaterial 
amendments should not be received. 

Winchester, 1880 C. D. 92, 17 0. G. 453. 

AMENDMENTS AND ACTIONS BY APPLICANTS. 
Rule 68. Right to Amend. 

The applicant has a right to amend before or after 
the first rejection or action; and he may amend as 
often as the examiner presents new references or 
reasons for rejection. In so amending the applicant 
must clearly point out all the patentable novelty which 
he thinks the case presents in view of the state of the 
art disclosed by the references cited or the objections 
made. He must also show how the amendments avoid 
such references or objections. 

After such action upon an application as will entitle 
the applicant to an appeal to the examiners in chief 
(Rule 134), or after appeal has been taken, amend- 
ments canceling claims or presenting those rejected in 
better form for consideration on appeal may be ad- 
mitted; but the admission of such an amendment or 
its refusal, and any proceedings relative thereto, shall 
not operate to relieve the application from its condi- 



Rule 68 RIGHT TO AMEND. 262 

tion as subject to appeal, or to save it from abandon- 
ment under Rule 171. If amendments touching the 
merits of the application be presented after the case 
is in condition for appeal, or after appeal has been 
taken, they may be admitted upon a showing, duly 
verified, of good and sufficient reasons why they were 
not earlier presented. From the refusal of the pri- 
mary examiner to admit an amendment a petition will 
lie to the Commissioner under Rule 142. No amend- 
ment can be made in appealed cases between the filing 
of the examiner's statement of the grounds of his 
decision (Rule 135) and the decision of the appellate 
tribunal. After decision on appeal amendments can 
only be made as provided in Rule 140, or to carry into 
effect a recommendation under Rule 139. 

HISTORY. 

Eule 34 of 1869 was the same as Eule 31 of 1870 except 
that the last sentence was omitted and instead of the words 
"Assistant Commissioner" the words "^Commissioner in Per- 
son" was used. 

Eule 31 of 1871 reads: "The applicant has a right to 
amend after the j&rst rejection; and he may amend as often 
as the Examiner presents any new references. After a second 
rejection and at any time before the issue of a patent, special 
amendments may be made if sufficient reason therefor be 
shown." 

Eules of 1873 inserted "on approval by the Commissioner" 
after "made," and added, "but such amendments must first 
be submitted to the tribunal last acting on the case, for 
recommendation or objection. Affidavits in support of appli- 
cations will not be received at any stage of the examination 
unless the Office denies that .the device is operative." 

In 1878 the clause "and will be subject to revision and 
restriction the same as original amendments" appears between 
"objection" and the period before "affidavits." 

In 1884, "After an appeal or" was inserted in the revised 
Eule 67 of 1879 before "After such action the" and the fol- 
lowing matter was added : "No amendment can be made be- 
tween hearing on appeal and decision; and after decision by 
any appellate tribunal amendments can be made only in 



263 RIGHT TO AMEND. Rule 68 

accordance with such decision, except as provided in Eule 137." 
Substantially the present rule, omitting the last clause, in 
1888. 

Following the notes to this rule I have reproduced the 
paper read by Examiner Wm. A. Kinnan, Jan. 38, 1915, before 
the Examining Corps of the U. S. Patent Office; another 
paper relating to the Examination was read by Examiner 
James H. Colwell, March 25, 1915. 
See Eules 66, 69 and 77. 

CONSTRUCTIONS. 

(1) Propriety of Applicant's Action. 

(2) Applicant's Action as a Foundation for a Final 

Eejection. 

(3) Shifting Ground. 

(4) Action by the Office. 

(5) Eeopening After Final Eejection. 

(6) Amending After Appeal. 

(7) Amending for Appeal. 

(8) Additional Cases. 

(1) Propriety of Applicant's Action. 

A joint application may apparently be amended, by 
eliminating one of the applicants. 
In re Eoberts, 273 0. G. 410. 
Tf necessary, an amendment may be made during an inter- 
ference. 

Liebman et al. v. ISTewcomb, 229 0. G. 613. 
A broadening of the claims without explanation is im- 
proper. If the Examiner objects to the multiplicity of claims 
this should be replied to. 

Creviling, 197 0. G. 779. 
Amendment by telegram confirmed by letter is proper. 

Wheary, 197 0. G. 534. 
Claims can only be taken out of the case by definite in- 
structions of the applicant. 

Iddings & Iddings, 197 0. G. 239. 
In asking the withdrawal of a final rejection proper action 
should be taken. 

Morley, Jr., 185 0. G. 1379. 
The response made to the final rejection was clearly a suf- 
ficient response to a rejection upon new grounds. The Ex- 
aminer is therefore directed to consider the application on its 
merits in view of the argument. 
Mygatt, 184 0. G. 802. 
If one has not complied with this rule in pointing out all 



Rule 68 EIGHT TO AMEND. 264 

the novelty he has no right to assume that he will be allowed 
a claim under Eule 78. 

Goldsmith & Whiting, 184 0. G. 553. 

An issue should he reached. A final rejection' should not 
be given upon the second rejection unless an unmistakable 
issue has been reached. 
Bass, 183 0. G. 506. 

The action of the Examiner in apparently allowing claim 8 
warranted applicant in assuming that in presenting his claims 
relating to the same subject matter an argument was un- 
necessary. 

Beard, 178 0. G. 319. 

Aug. 13, 1910, Examiner held that claims 5 and 6 were 
allowable after correction, and finally rejected other claims. 
Jan. 3, 1911, amendment cancelling the finally rejected claims 
and adding three new ones. Entry refused. 

Aug. 21. Amendment cancelling claims offered. Case 
abandoned. After the case was finally rejected applicant 
should, within one year from the date thereof, either have 
cancelled the claims, taken on appeal, or taken steps which 
resulted in having that final rejection set aside as premature. 
Dietrich, 174 0. G. 829. 

AVhere there is a rejection of the ground that no sufficient 
elements are enumerated to sustain a functional clause, or 
for want of particularity "it may be urged that if he is 
obliged to seek his remedy by appeal and the action of the 
Examiner is affirmed the applicant is precluded from going 
back to the Examiner and further amending his claims, the 
obvious answer is that before appealing the claims and before 
they are finally rejected the applicant should introduce other 
claims having the structure stated with sufiicient particu- 
larity to avoid this ground of the Examiner's rejection. 
Bitner, 140 0. G. 256; 173 0. G. 1081. 

An applicant may not insert a new set of claims after a 
requirement of division. 

Moorehead, 173 0. G. 1079. 

The applicant should point out how his device differs from 
that of the references to entitle him to have the Examiner 
point out the pertenency of the same. 
Levy, 173 0. G. 288. 

Claims to the motor allowed. Petition to withdraw from 
issue to present claims to the combination of the motor with 
washing- machine. Eefused for want of showing. 
AVeber & Swalter, 173 0. G. 288. 

If applicant does not consider all the references cited and 



265 RIGHT TO AMEND. RuIg 68 

point out where in his opinion the references do not apply 
the action is not responsive and the case is abandoned. 
Sachs, 157 0. G. 755. 

The Examiner rejected two claims a second time and cited 
a new reference against other claims, applicant acted on said 
other claims but said nothing about the first two. 

"I am of the opinion that applicant's amendment was as 
complete as he could have made it without repetition. 

"If the applicant has seen fit to present further reasons 
why the rejected claims should be allowed it was his privilege 
to do so; but it is presumed that he had no further reasons 
to present. Having once presented his argument, it was not 
incumbent upon him to repeat it. Not abandoned." 
Newbold, 155 0. G. 553. 

A claim introduced by amendment relates back to the date 
of the filing of the anplication. 

McParland v. Watson & Watson, 146 0. G. 357. 

The practice of repeatedly filing amendments which can 
serve no purpose except to prolong the life of the case or 
which are presented in the hope of wearing the Examiner 
into allowing a claim upon the ground that because of its 
specific character it can do no harm, can not be too strongly 
condemned. 

Perry, 140 0. G. 1001; 157 0. G. 1243; 173 0. G. 1089. 

It is not sufficient that applicant distinguishes his device 
from one of the references, it must be from all. 
Inman. 160 0. G. 1038; 172 0. G. 1089. 

It may be, as the patentee's counsel declares, that the 
criticisms of the Examiner led to the present form of the 
claim. But if the Examiner's criticisms were unsound the 
patentee could have had- them reviewed by an appropriate 
appeal. 

Logan V. Warren Axle and Tool Co., 166 0. G. 986. 

In Ex parte Perry the practice was condemned of repeat- 
edly filing amendments in the hope of wearing the Examiner 
into allowing a claim upon the ground that because of. its 
specific character it can do no harm. 

Pledger, Jr., & Campbell, 157 0. G. 486; 172 0. G. 1089. 

The Examiner rejected two claims a second time and cited 
a new reference against these claims, applicant acted on said 
other claim but said nothing about the first two. 

"1 am of the opinion that the applicant's amendment was 
as complete as he could have made it without repetition." If 
the applicant had seen fit to present further reasons why the 
rejected claims should be allowed it was his privilege to do 



Rule 68 EIGHT TO AMEND. 266 

so. but it is presumed that he had no further reasons to pre- 
sent. Having once presented his argument it was not incum- 
bent upon him to repeat it. 
Newbold, 155 0. G. 553. 
Amendment embodying the theory of the attorney, patent 
held void. 

Steward v. American Lava Co., etc., 149 0. G. 602. 
Where claims were rejected and canceled and broader claims 
substituted it was necessary that applicant should state why he 
regarded them as patentable. 
Opeland, 149 0. G. 309. 
Inserting' claims by attorney without new oaths does not 
invalidate. 

Cutler-Hammer Mfg. Co. v. Union Electric Mfg. Co., 147 
T. E. 266. See Singer Mfg. Co. v. Cramer. 97 0. G. 
555. 
Affidavits as to utility and state of th^ art. 

In re Eastwood, 144 0. G. 819. 
The Examiner-in-Chief on appeal made a recommendation 
that one claim be rejected upon a reference not cited by the 
Primary Examiner. The Primary Examiner adopted such 
suggestion but refused to receive a general amendment to the 
case. Approved. "If, however, the applicant will present an 
amendment either amending claim 6 or presenting a claim 
or claims limited to the subject matter covered by that claim, 
the same may be entered and considered." 
Dietrich, 142 0. G. 568. 
The practice of repeatedly filing amendments which can 
serve no purpose except to prolong the life of the case or 
which are presented in the hope of wearing the Examiner into ' 
allowing a claim upon the ground that because of its specific 
character it can do no harm, can not be too strongly con- 
demned. 

Perry, 140 0. G. 1001. 
The excuse that the files were misplaced seems to have been 
considered a sufficient excuse for delay beyond the year. 
• Curtis, 138 0. G. 767. 

Piecemeal action is contrary to the spirit and the letter of 
the rules and the statutes and is not to be permitted. 

Schmitt & Tanody, 121 0. G. 689; Sperry, 121 0. G. 

687. 

Apparently if applicant inserts claims that are not properly 

included in the case they should be rejected for this reason 

and the other claims examined on their merits. The inser- 



267 RIGHT TO AMEND. Rule 68 

tion of the claims does not seem to warrant the Examiner 
in refusing to act as the merits of the other claims. 
Scott, 100 0. G. 681; Goeby, 133 0. G. 991. 
Without such a showing the amendments submitted were 
not admissible although it would have been proper to cure 
the informalities by proper amendment (Paige, 108 0. G. 
1587). Such an amendment, however, under the provisions 
of Tiule 68 would not relieve the application from its condi- 
tion as subject to appeal or save it from abandonment. 
Green, 130 0. G. 299. 
A request for explanation of the Examiner's position should 
be full and specific and should not be confused with the argu- 
ment upon the merits of the action. 

Knapp and Cade, 128 0. G. 1687. 
Applicants should fullv present their case upon each action. 

Knapp V. Cade, 128" 0. G. 1687. 
Where an applicant before the Patent Office acquiesces in 
the ruling that his claim is not patentable, he can not be 
heard to question the ruling thereafter, and it is immaterial 
whether it is right or wrong. 

Computing Scale Co. of America v. The Automatic Scale 
Co., 119 0. G. 1586. 
An amendment erroneously entitled in one case can not be 
transferred to another. 

"Since the amendment has been placed in the record of one 
ease and replied to therein, it must remain there to preserve 
the record." 

Haultain & Stovel, 119 0. G. 649. 
Whether well founded or not the Examiner's action is bind- 
ing upon the applicant until set aside, and it is incumbent 
upon him to take steps to have it set aside within the year 
allowed by law for action. 
Pead, 119 0. G. 337. 
Claims should be amended, not construed, to avoid refer- 
ences and the same course should be followed in all other 
cases when the meaning of claims is not clearly expressed by 
their language. 

Briggs V. Little v. Cooke v. Jones and Taylor, 116 0. 
G. 871. 
Sound reason requires as much of the applicants a clear 
and proper explanation of their position as it does of the 
Examiner. 

Murray, 111 0. G. 2491. 
Application for method, claims for apparatus and product, 



Rule 68 RIGHT TO AMEKD. 268 

introduced subsequently. These latter claims take date of 
filing- of application so far as bar of public use is concerned. 
Edison v. American Mutoscope Co., 110 F, E. 660. 
"In an ex parte case the applicant has no knowledge what 
references and reasons for rejection the Examiner may dis- 
cover and has no opportunity to argue the matter before the 
Examiner's decision is rendered.'^ Applicant is undoubtedly 
entitled to argue the matter and since he can not do so before 
the decision, the statute gives him the right to do so after 
decision. 

Newcomb v. Lemp, 110 0. G. 308. 
When the claims were twice rejected as involving new mat- 
ter an amendment not remedying this defect is not responsive 
and should not be admitted. 
Edwards, 109 0. G. 1051. 
Where certain formal objections are made and the claims 
are finally rejected, held that the applicant may amend to 
avoid the formal objections, but can not make amendments 
presenting new claims or affecting the merits. 
Paige, 108 0. G. 1587. 
It is the duty of an applicant not only to prepare the 
papers required by the Office, but to see that they are re- 
ceived. If he receives no acknowledgment from the Office 
within a reasonable time after mailing the paper, it is his 
duty to make inquiries and correct the mistake which ap- 
parently exists. 

Stuckgold, 1900 C. D. 307, 106 0. G. 544. 
If an amendment is made inserting words after "and" in 
a certain line and "and" occurs twice in that line, a mistake 
is the fault of the applicant. 
Curtiss, 105 0. G. 500. 
Definitions and admissions made by an applicant for a 
patent in the course of the proceedings in the Patent Office, 
in order to avoid or differentiate his invention from those 
disclosed considered in the subsequent construction of his 
patent. 

New York Asbestos Mfg. Co. v. Ambler Asbestos Air Cell 
Covering Co., 103 P. E. 316. 
Applicant has a right to amend claims that have been re- 
jected after an interference. 
Harvey, 103 0. G. 621. 
Acquiescence. Estoppel. Construction. 

Electric Eailway Company of the United States v. 
Jamaica & Brooklyn Eailroad Company, 1894 C. D. 
406. 



269 EIGHT TO AMEND. Rule 68 

Apparently if applicant inserts claims that are not properly 
included in the case, they should be rejected for this reason 
and the other claims examined on their merits. The inser- 
tion of the claims does not seem to warrant the Examiner in 
refusing to act on the merits of the other claims. 
Scott, 100 0. G. 681; Greely, 133 0. G. 991. 
The Examiner required one of two claims to be eliminated 
because they were identical; in complying, the applicant lim- 
ited the scope of his invention by estoppel. 

The United States Eepair & Guaranty Co. v. The Assy- 
rian Asphalt Co._, 98 0. G. 582-584. 
Effect of arguments in construing patent. 

Swain v. Holyoke Machine Co., 97 0. G. 400. 
If a part of an amendment is inadmissible the whole should 
be refused entry. 

A new drawing may not be filed arbitrarily at the option 
of the applicant, the drawing already in the case being satis- 
factory. 

Pugh, 1901 C. D. 78, 96 0. G. 841-2. 
Unwarranted persistency condemned. Letters and amend- 
ments may be returned. 

Dravo and Miller, 91 0. G. 460-1. 
Affidavits under Eule 75 are responsive to the Examiner. 

Wright & Stebbins, 1899 C. D. 153, 88 0. G. 1161. 
Applicants are not required to make amendments at all 
unless good reasons therefor are in the first place presented 
by the Office. 

Winchester, 80 C. D. 92. 
Tlie burden is upon the applicant to establish by proof 
that is clear and conclusive, the patentability of the invention 
as claimed. 

Durham v. Com., 1895 C. D. 307, 71 0. G. 601. 
An amendment to an application for a patent made to in- 
troduce a new theory of the invention, and which contains 
new claims covering a process based on such theory neither 
of which were mentioned in the original application, if per- 
missible as within the invention, should be verified by the 
oath of the inventor. (For cases in point, see Cent. Dig., 
Vol. 38, Patents 152.) Amendment of application, see note to 
Cleveland Foundry Co. v. Detroit Vapor Stove Co., 68 
C. C. A. 239. 
The most casual inspection of the cases cited in support of 
the appellant's contention, for example, Topliff v. Topliff (59 
0. G. 1257, 1892 C. D. 402), shows that the expression quoted 
from the opinion referred to differences of construction and 



Rule 68 RIGHT TO AMEND. 270 

of function so wide as to make the citation inapposite in this 
case. 

Snider, 1894 C. D. 23, 66 0. Gt. 1309. 
A claim was erased to secure an allowance, a petition to 
withdraw the case from issue in order to reinstate the claim 
was denied. 

Potter, 1890 C. D. 163, 53 0. G. 760. 
If an applicant makes an amendment in compliance with 
the demand of an Examiner as to some particular matter, it 
is not necessary for the applicant to state his reasons there- 
for, unless his amendment is of greater scope than the require- 
ment of the Examiner. 

Winchester, 1880 C. D. 92. 
Material amendments in matter of substance made in good 
faith can not lawfully be refused consideration by the Office 
at any time before the issuance of the patent. Immaterial 
amendments should not be received. 

Winchester, 1880 C. D. 92, 17 0. G. 453. 

(2) Applicant's Action as a Foundation for a Final Rejection. 

That the final rejection was a surprise is not a ground for 
an extension of time for amending claim. 
Hartford, 184 0. G. 551. 

Final rejection should not be given upon the second official 
action unless an unmistakable issue is reached to the patent- 
abilitv of the invention claimed. 

Bass, 183 0. G. 506; Cook, 231 0. G. 285. 

Applicant has canceled claims in view of the references of 
record and it is not unreasonable to assume that he under- 
stands them and their points of similarity and differences. 
Inman, 160 0. G. 1038. 

If the claims have been broadened or not materially altered 
a final rejection is in order. 
Lasance, 131 0. G. 1421. 

The final rejection in response to a request for fuller in- 
formation as to the pertinence of the reference was not based 
upon a request for a reconsideration or upon any action by 
the applicant which would justify reconsideration of the case, 
and is therefore set aside. 

Wainwright, 125 0. G. 2047. 

No, good reason is seen why an applicant should question 
the propriety of a final rejection or why the Office should 
entertain such a question unless the applicant desires to con- 
tinue the prosecution of the case by a proper action. In 
such event the applicant should offer the amendment or argu- 



271 EIGHT TO AMEND. Rule 68 

ment constituting the desired continued prosecution along with 
his argument denying the propriety of the final rejection. 
Thayer, 122 0. G. 1724. 
It is true that the Office desires to afford an applicant ample 
opportunity for amendment and where the pertinence of the 
references has not been made clear and explanation thereof 
is asked the action should not he final. But the pressure of 
work in the Office requires that the prosecution of a case be 
closed as soon as possible. 
Cox, 122 0. 0. 1045. 
Eejected for inoperativeness, affidavits filed again, and 
finallv rejected. Proper final rejection. 
Schmid, 121 0. G. 1675.' 
If the Examiner's action was insufficient to enable the 
applicants to respond intelligently, a request for an explana- 
tion would have been a proper action. 
Schmitt and Tanody, 121 0. G. 688. 
Where a claim for a process is rejected, which claim is 
qualified by a brief statement of the article produced, and an 
amendment is filed more specifically defining the structure of 
the article, held that the process claim is not changed in scope, 
and a final rejection is in order. 
Crecelius, 116 0. G. 2531. 
The amendment and argument were within the year, but 
not filed at the same time. Held sufficient to entitle applicant 
to a reconsideration. 

Weinmer, 115 0. G. 1585. 
The mere cancellation of the finally rejected claims does not 
reopen the case for the prosecution of other claims. 
Almy, 115 0. G. 1584-1585. 
Where the applicant is proceeding promptly and in ap- 
parent good faith to secure further information as to the- 
position of the Office before amending further, he should be 
given a second opportunity to bring the claims into allow- 
able condition. 

Wieser, 110 0. G. 1726. 
Applicant requested an explanation of the Office letter and 
also reconsideration. Final rejection regular. 
Silsby, 109 0. G. 1051. 
"It is true, as the Examiner states, that the invention is a 
simple one; but when the applicant has read the references 
carefully and fails to find therein certain specified features 
included in his claims and asks that the Examiner point out 
wherein these features are found in the references the Ex- 



Rule 68 EIGHT TO AMEND. 272 

aminer should not consider it unduly burdensome to comply 
with the applicant's request." 

"This case is very diflPerent from that where an applicant 
asks merely that the Office explain the references without 
pointing out wherein he regards them as not pertinent/' 
Starr, 106 0. G. 263. 
A consideration of the claims and the amendment makes 
it appear that the applicant is not attempting to shift his 
ground, but is merely attempting to so change' and limit the 
claim as to avoid the rejection and objections made by the 
Examiner. 

Day, 105 0. G. 1782. 
The amendment included a new claim which was held to 
be the same as the old claim 3 and the application finally 
rejected. The third claim had as an element a "tub," the 
new claim four "an oscillating tub," Held rejection prema- 
ture. 

Casler 2d case, 100 0. G. 1330. 
If the amendment is merely formal a final rejection is 
proper, 

Casler, 1902 C. D. 292-3, 100 0. G. 1330. 
Only an argument on the merits was presented, 
"The petitioner's action did not call'for a further explana- 
tion, and therefore the Examiner was justified in finally re- 
jecting the claims," 

Sorenson, 1901 C. D, 16, 98 0, G, 415, 
The presenting of reasons why the references do not meet 
the claims is equivalent to a request for further action. 
Vose,' 1901 C. D. 202, 97 0. G, 1599-1600. 
Where claims are amended the amendment may not be held 
as not involving a matter of substance merely because such 
amendment does not avoid the references, 
Pfeffer, 1894 C. D, 11, 66 0, G. 845. 
When an applicant asks a reconsideration he waives any 
right he might have had to a fuller statement by the Office. 
Mahlecke, 1892 C. D. 206, 61 0. G, 285. 
An uncalled for and superfluous drawing should not be re- 
ceived and filed. 

Shepard, 1892 C. D. 162, 60 0. G. 575. 
If, as a matter of language, the amended claim does not 
present the same idea of invention presented by the previous 
claim, an amendment has been made in matter of substance 
and the applicant is entitled to a second rejection upon the 
amended claim. 

Griswold, 1890 C. D. 13, 50 0. G. 838. 



273 EIGHT TO AMEND. EuIg 68 

If a figure is added to a drawing on file in the Office with- 
out permission of the same, the figure must be erased. 
Cordrey, 1889 C. D. 171; 1889 C. D. 252. 
An applicant must not acquiesce in an erroneous judgment 
of the principal Examiner. 
Hyde, 1871 C. D. 109. 

(3) Shifting Ground. 

Adoption of claims suggested under Eule 96 does not con- 
stitute an election of a species. 
Burk, 184 0. G. 288. 

In re Moore, 173 0. G. 891; Sutin, 170 0. G. 482. 
A party can not be permitted to reinstate claims canceled 
in view of a requirement for division. 
Wick, 117 0. G. 902-903. 
If applicant voluntarily confines his claims to one of two 
inventions he can not change and present claims to the other 
after the claims first presented are rejected. 
Barnes, 115 0. G. 247. 
After a case has been examined and finally disposed of on 
one line the applicant can not shift his ground. 

Applicant is no more entitled to insert a new claim after 
appeal than to insert one that has been canceled. The fact 
that an interference would result from insertion of the claim 
makes no difference. 

Eecklinghausen & Potter, 113 0. G. 1146. 
An applicant may not change his claims from a process to 
an article after case is disposed of. It is, however, proper 
to permit a proper change in form. 
Walker, 113 0. G. 284. 
Applicant may not change his claims from a process to an 
apparatus. 

Feld, 112 0. G. 252. 
Having elected to prosecute one class of claims applicant 
can not shift his ground and insert another. 
Ferrell, 106 0. G. 766. 
When an applicant has elected to retain one class of specific 
claims he can not after rejection insert a different species. 
Maddux, 106 0. G. 764. 
After making a combination claim which is rejected appli- 
cant will not be permitted to shift his ground to make his 
application for an element of such claim. Such element being 
a different invention and differently classified from the com- 
bination. 

Swantusch, 1902 C. D. 377, 101 0. G. 1129. 



Rule 68 RIGHT TO AMEND. 274 

If one presents an application for a process he can not 
change it to one for an apparatus, even on recommendation 
of the Examiner-in-Chief. 

Alberli, 1900 C. D. 95, 91 0. G. 2731. 

Where an application originally contained claims for a 
method, a product, and an apparatus for carrying out the 
method, and upon an Office requirement of division the appli- 
cant canceled the claims for the apparatus, and where the 
disclosure of the apparatus does not make it clearer how the 
method might he carried out, the drawings and description of 
the apparatus should be canceled. 

Hofely & Eedlefsen, 1893 C. D. 94, 64 0. G. 559. 

An applicant having originally presented only claims for a 
method and having prosecuted them to a final rejection and 
taken an appeal to the Examiners-in-Chief, has made his elec- 
tion,, and he can not be permitted to thereafter substitute 
claims covering mechanism alleged to be capable of carrying 
out the method originally believed to be patentable and do 
not inchide new matter. 

Eschner, 1893 C. D. 68, 63 0. G. 760. 

(4) Action hy the Office. 

Even if it were not clear from the amendment that appli- 
cant did not understand the objection, if he came in promptly 
and showed this, the final rejection should be withdrawn. 
Huntley, 196 0. G. 803. 
Stating his reasons for rejection more fully does not re- 
open a case. 

Morley, Jr., 185 0. G. 1379. 
A final rejection is in order notwithstanding the fact that 
an applicant has failed to respond to an objection of a 
formal character made by the Examiner. 
Sabofish, 183 0. G. 1033. 
An issue should be reached. A final rejection should not 
be given upon the second rejection unless an unmistakable 
issue has been reached. 
Bass, 183 0. G. 506. 
When a clear issue has been reached and it is evident that 
applicant understands the application of the references. No 
further explanation of the references is necessary. 
Kelley, 183 0. G. 220. 
In case of ordinary doubt the policy of the patent system, 
as customarily maintained in the Patent Office, has been to 
give tlie applicant the benefit thereof, because no absolute right 



275 EIGHT TO AMEND. Rule 68 

of property is conferred by the grant of a patent (Thomson, 
26 App. D. C. 419, 425). 
Moore, 178 0. G. 891. 
A reference to a decision of the Commissioner held suf- 
ficiently definite. 

Patterson, 178 0. G. 835. 
The action of the Examiner in apparently allowing claim 
warranted applicant in assuming that in presenting his claims 
relating to the same subject matter an argument was un- 
necessary. 

Beard, 178 0. G. 319. 
When requested so to do in good faith the Examiner should 
apply the references. Cases collected. 
Andrews, 172 0. G. 1889. 
Whether the action of the Office was such as to confer the 
rights to amend is one that may not be controlled by manda- 
mus. 

Sung v. Moore, Com., 172 0. G. 834. 
However, if it is pointed out that the claims do not contain 
the matter relied on and if they did they would be antici- 
pated by a reference of record, this does not constitute the 
citation of a new reference. 
Cott, 166 0. G. 985. 
If the Commissioner recommends certain claims only these 
claims should be considered. 
Silden, 164 0. G. 741. 
Claims should not be allowed merely because they repre- 
sent a multitude of elements all of which do not appear in 
one or two or even more references. 
Quagan, 162 0. G. 538, 539. 
A criticism of the theory of operation of the device that 
does not purport to holding it inoperative, does not reopen 
a case. 

. Hardy, Jr., 161 0. G. 268. 

It is the duty of the Examiner to consider not only the 
claims but the invention disclosed. If he is of the opinion 
that an application discloses no invention over the references, 
it is perfectly proper for him to so state. 
Eox, 157 0. G. 485. 
It is the obvious intent of sections 4803-4909 of the E. S., 
and Rules 65-68, inclusive, to bring about a clear understand- 
ing between the Examiner and the applicant before the final 
rejection of the case is entered from which appeal may be 
taken (130-302). 

Miller, 139 0. G. 731. 



Rule 68 EIGHT TO AMEND, 276 

The issue being distinctly formed, and the amendment to 
claims not being substantial, the request at the end of appli- 
cant's argument, that if a favorable decision could not be 
given there should be a final rejection, should be complied 
with. 

Marshall, 139 0. G. 198. 
Where an Examiner finds it necessary to give reasons ex- 
plaining the application of a reference, a final rejection should 
not be entered in the same letter where those reasons have 
been stated for the first time. 
Jackson, 132 0. G. 1324f. 
The Examiner finally rejected claims in reply to a request 
for explanation at the same time giving the information 
sought. With a final rejection he rendered the information of 
no avail except through a petition. 

Walker, 129 0. G. 481; 68 Atwood, 162 0. G. 1183. 
After final rejection no affidavit under Eule 75 will be re- 
ceived. 

Berg, 120 0. G. 903; Eomunder, 157 0. G. 209. 

(5) Reopening After Final Rejection. 

That the final rejection was a surprise is not a ground for 
an extension of time for amending claims, 
Hartford, 184 0. G. 551. 
Adoption of claims suggested under Eule 96 does not con- 
stitute an election of a species. 
Burk, 184 0. G. 288. 
Without such a showing the amendments submitted were 
not admissible although it would have been proper to cure 
the informalities by proper amendment (Paige, 108 0. G. 
1587). Such an amendment would not relieve the application 
from its condition as subject to appeal or save it from aban- 
donment. 

Green, 130 0. G. 299. 
The statement of the attorney that the subject matter of 
a proposed amendment filed after final rejection was not 
earlier called to his attention by the inventor is not a sufficient 
showing upon which to admit the amendment, 
Schrader, 120 0. G. 2127, 
The amendment after final rejection being unaccompanied 
by a showing as to why it was not sooner presented was re- 
jected. 

Marks, 109 0, G, 1609. 
After final action in a case it is not to be reopened at the 
request of applicant except for good reasons. The affidavit 



277 . EIGHT TO AMEND. Rule 68 

simply setting forth that the new claims contained features 
which had been overlooked is insufficient. 
]S^ettles, 107 0. G. 541. 
When an application has been prosecuted to final rejection, 
it is not just to other applicants to reopen it for consideration 
of amendments which should have been earlier presented. 
Brown, 107 0. G. 269. 
That the attorney has got further light upon the subject is 
not a good reason for admitting additional claims. 
Schmidt, 1902 C. D. 327, 100 0. G. 2602. 
The showing of facts to excuse delay must be correct in 
form and sufficient in substance. The fact that applicant did 
not fully understand the case is not sufficient. 
Raymond, 1902 C. D. 170, 99 0. G. 1386. 
Where amendment is filed after final rejection it must be 
accompanied by an affidavit showing good and sufficient rea- 
sons why it was not presented before in view of special cir- 
cumstances amendment ordered entered. 
Lansing, 96 0. G. 2063. 
A new claim refused admission after testimony taken in an 
interference. 

Potter V. Van Yleeck v. Thomson, 1901 C. D. 53, 95 
0. G. 2484. 
An affidavit to the effect that applicant did not fully appre- 
ciate the value and importance of certain features, and there- 
fore, did not present claims for them, is not sufficient show- 
ing to warrant the reopening of the case. 

Beckwith, 1901 C. D. 43, 95 0. G. 1451. 
An amendment upon the merits after final rejection should 
be accompanied by a verified showing of good and sufficient 
reasons why it was not earlier presented. 

Peloubet, 1891 C. D. 121, 56 0. G. 928. 
Amendment presented nearly two years after case in condi- 
tion for appeal refused. Eeopening case refused. ISTo showing. 
Cordrey, 1889 C. D. 171, 98 0. G. 397; c. c. 1889 C. D. 
252. 
When a certain specific claim was suggested to the appli- 
cant (Rule 96), but he refused to insert it, an amendment 
containing this claim was refused entry after ten years' delay. 
Gray, 1889 C. D. 91, 46 0. G. 1277. 
An applicant can not reassert a claim after final rejection 
which he had previously voluntarily erased. In such case he 
must file a new application. 

Johnson, 1887 C. D. 64, 40 0. S. 574. 



Rule 68 EIGHT TO AMEND. 278 

An amendment can not ordinarily be admitted after two 
rejections. 

Thurmond, 37 0. G. 217. 

(6) Amending After Appeal. 

After a case is ready for appeal if a new reference is cited 
the applicant may continue his appeal in view of such amend- 
ment or elect to further prosecute the case before the Pri- 
mary Examiner. 

Mevey, 56 0. G. 805; Scott, 166 0. G. 985. 

Claims admitted after final rejection under that part of 
Rule 68 requiring a "showing duly verified, of good and suf- 
ficient reasons why they were not earlier presented," are for 
consideration by the Primary Examiner and not for the pur- 
pose of appeal only. 

Meyer, 148 0. G. 1088. 

Cases will not be reopened for amendment after appeal 
except under very unusual circumstances. The fact that the 
applicant was surprised by the interpretation put on the 
claims does not constitute such circumstance. 
135 0. G. 1122. 

Without such a showing the amendments submitted were 
not admissible although it would have been proper to cure 
the informalities by proper amendment (Page, 108 0. G. 
1587). Such an amendment, however, under the provisions 
of Rule 68 would not relieve the application from its condi- 
tion as subject to appeal or save it from abandonment. 
Grien, 130 0. G. 299. 

Where a new reference is cited, however, upon appeal in 
the Patent Office, the practice is to require the applicant to 
elect whether the case shall be returned to the Primary Ex- 
aminer for consideration of amendments or whether the ap- 
peal shall be continued without amendment, and if he chooses 
the latter course he is considered to have waived his right 
to amend. 

Millett and Reed, 125 0. G. 2764. 

If the Examiners-In-Chief have recommended new claims 
which are rejected on new references, the applicant may not 
substitute other claims. 

Myers, 122 0. G. 351. 

It is contrary to the practice of the Office to reopen cases 
for amendment after appeal except under unusual circum- 
stances where the interest of justice plainly demands it. 
Lesler, 117 0. G. 2631; Auer, 116 0. G. 595. 

After appeal to the Examiners-in-Chief an application will 



279 RIGHT TO AMEND. Rule 68 

pot be reopened for the consideration of claims which require 
a reexamination merely because the applicant has concluded 
that he wishes to present such claims. 

Merrill, 116 0. G. 1186; East, 116 0. G. 1186. 

The proper course to be pursued by an Examiner on dis- 
covering a new ground for rejection subsequently to an appeal 
to the Examiners-in-Chief is to direct the attention to it of 
both the applicant and the Examiners-in-Chief. The appli- 
cant may then elect to continue the prosecution of the appeal 
or to withdraw it and be heard by the Primary Examiner. 
Teller, 113 0. G. 548-549. 

Claims allowed in original application and omitted by mis- 
take in reissue application permitted insertion after appeal. 
Gilmer, 109 0. G. 1337. 

As long as applicant keeps within the law no delay is un- 
reasonable or works a forfeiture of his rights. A failure to 
manufacture does not work forfeiture. 

Osborne v. Holsapillar, 102 0. G. 1296-1297. 

Amendments after appeal may be admitted for the purpose 
of putting the rejected claim in better form for consideration 
on ai^peal. Such amendments should not vary the scope of 
the claim. If they have been admitted and do vary the scope 
of the claim,' the appellate tribunal should not pass upon the 
merits, but the case should be sent back to the Primary 
Examiner for action. 

Hooper & Clark, 1891 C. D. 123, 56 0. G. 929. 

Where an applicant has taken an appeal from the Primary 
Examiner to the Examiners-in-Chief and obtained their deci- 
sion, if he sees fit thereafter to go back to the Primary Ex- 
aminer under proper authority from the Commissioner and 
amend his case in such a manner as to change its nature or 
character with reference to the subject matter involved in the 
appeal, he in effect abandons and waives his right to appeal, 
and must take his stand upon the new case as he has made it. 
Williams & Raidabaugh, 40 0. G. 1337. 

The rule precludes all amendment of the claim after it 
leaves the Examiner, except as provided in the rule for special 
amendments; in which case the amendment, if admitted, is 
sent to the Examiner for his action. 
Hammond, 1872 C. D. 149. 

When an appeal is taken the case is closed before the Pri- 
mary Examiner, unless it is regularly remanded with leave 
to amend or with direction for further examination. If it 
'be so remanded the case is reopened below, and can not re- 
turn to the appellate tribunal until the applicant has re- 



Rule 68 EIGHT TO AMEND. 280 

sponded to the new examination either by amendment or fresh 
appeal. 

Appleton, 1869 C. D. 8. 

(7) Amending for Appeal. 

Claims can only be taken out of the case by definite instruc- 
tions of the applicant. 

Iddings and Iddings, 197 0. G. 239. 
If applicant accompanies his appeal with an improper 
amendment, the appeal should be forwarded and the amend- 
ment refused. 

Pillard, 191 0. G. 585. 
Eule is applicable to design application. 

Bittendorf, 184 0. G. 801. 
Structural changes sought to be introduced to put the 
claims in better form for appeal. Held amendment related 
to the merits and was inadmissible without a verified showing. 
Brown & Sprink, 1801 C. D. 135, 160 0. G. 1039. 
Claims differing in scope from those under final rejection 
can not be admitted without a proper showing. 
Kenney, 119 0. G. 2337. 
Claims admitted after final rejection under . that part of 
Eule 68 requiring a "showing duly verified, of good and suf- 
ficient reasons why they were not earlier presented" are for 
consideration by the Primary Examiner and not for the pur- 
pose of appeal only. 

Meyer, 148 0. G.. 1088. 
Cases will not be reopened for amendment after appeal 
except under very unusual circumstances. The fact that 
applicant was surprised by the interpretation put on the 
claims does not constitute such circumstances. 
Milans, 135 0. G. 1122. 
Amendments cancelling claims or presenting those rejected 
in better form for consideration on appeal may be admitted 
after final rejection without reopening the case for further 
consideration. For a similar reason amendments to the de- 
scription presenting the invention more clearly when they do 
not touch the merits of the application should be entered. 
Loppenstein, 132 0. G. 1723. 
Descriptive matter relating to constructions involved in 
claims on which appeal is taken should not be required to be 
canceled prior to appeal. 

Kenney, 119 0. G. 3237. 
There is nothing inconsistent in filing an amendment with 
an appeal. 

Bach, 118 0. G. 1363. 

% 



281 RIGHT TO AMEND. Rule 68 

If a claim diSering in substance from those acted upon is 
presented ostensibly for appeal with his answer, Examiner 
should forward the appeal with his answer as to the rejected 
claims and should call attention to the fact that the additional 
claim has not been entered or acted upon and is not appealable. 
Wirt, 117 0. G. 599-600. 
A claim that brings forth no new or unconsidered point, 
but is simply more specific, is in better form for consideration 
on appeal. 

Marks, 111 0. G. 2492. 
Change of claims admissible to put them in better form for 
appeal must not change them in substance. The latter kind 
of claim can only be admitted on a proper showing. 
Xovotny, 108 0. G. 1327. 
Where claims are canceled a requirement for division and 
are presented in a separate application they can not properly 
be reinstated in the original case and considered on appeal. 
Fritts, 105 0. G. 2059. 
The drawing may be amended by the attorney without spe- 
cial authorization bv inventor. 

Wilcox, 1902 C. D. 409, 101 0. G-. 1829. 
New claims in substance may not be introduced after final 
rejection for appeal. 

Downing, 100 0. G. 2176. 
Amending application after filing. 

Grinnell v. Bruel, 89 0. G. 1863 Mlf.; Hobbs v. Beach 
(U. S. S. C), 94 0. G. 2357. 
Amending application after filing. 

Bechman v. Wood, 89 0. G. 2459-2462; Chicago & Is^orth- 

western E. E. Co. v. Sayles, 97 W. S. 554, 15 0. G. 

243, 1879 C. D. 349; Newton v. Furst & Co., 15 0. G. 

243, 119 W. S. 373; White v. Dunbar, 26 0. G. 353, 

119 W. S. 47; Brown v. Davis, 116 W. S. 237; Mieter 

v. Brais Co., 216 0. G. 201, 104 W. S. 350; Topliff 

V. Topliff, 59 0. G. 1257, 146 W. S. 156; Powder Co. 

V. Powder Works, 186 0. G. 1339, 98 W. S. 126; 

Halett V. Long, 89 0. G. 1141; Eouse, 88 0. G. 2242. 

Amendments cancelling claims or presenting those rejected 

in better form for consideration on appeal may be admitted 

either before or after the appeal has been taken without a 

showing why they were not earlier presented. 

The applicant's opinion may properly be consulted as to 
whether the proposed amendment is in better form than the 
corresponding claim which has been rejected. 
Collins. 1890 C. D. 27, 50 0. G. 992. 



Rule 68 EIGHT TO AMEND. 282 



(9) Additional Cases. 

These cases pass on the subject matter of this rule. 

Luten, 170 0. G. 482; Atwood, 163 0. G. 1183; Barrett 
and Alter, 127 0. G. 847; Eogers, 125 0. G. 2766; 
Peiree, 121 0. G. 1347; Eichmond, 120 0. G. 905; 
Lefever, 1904 C. D. 205, 110 0. G. 1430; Durafort, 
1904 C. D. 234, 110 0. G. 2017; Landis, 1903 C. D. 
127, 103 0. G. 1164; Bowles (second paragraph), 1903 
C. D. 95, 103 0. G. 429; Grant, 1900 C. D. 199, 93 
0. G. 2532; Wilier, 1900 C. D. 62, 91 0. G. 1033; 
Woodward, 1892 C. D. 179, 60 0. G. 1052; Barrett, 
1891 C. D. 154, 56 0. G. 1564. 

METHODS OF SHORTENING EXAMINATIONS. 

A Paper by Examiner Wm. A., Kinnan. 

January 28, 1915. 

The subject of patent law has been described as covering a very 
limited portion of the field of general law. While not extensive, it 
is, gentlemen, as deep as a well. 

It is believed to be generally recognized that there is no other 
branch of the law that requires a greater mentality, a wider knowl- 
edge, or greater skill and training. 

llip Ex 'miner, who with the all too little time for each case, is able 
to apply this law with reasonable accuracy, to the multitude of dif- 
ferent inventions, embraced in applications possessing a multitude of 
different imperfections and insufficiencies, and adjudicate the enor- 
mous number of claims required to mark the limits of the rights 
involved, must indeed possess a degree of skill, judgment and learn- 
ing that is, to say the least, unusual. He must be at once judge, 
jury and counsel. He must determine the law, weigh the evidence, 
and combat and expose the fallacies in the arguments presented by 
the too zealous applicant. All this he must do with a maximum of. 
speed, if the work before him is not to hopelessly accumulate. 

It is the purpose of this paper to make some suggestions lookmg 
to the shortening of the time required to finally adjudicate the ap- 
plication. That every effort to this end is necessary is abundantly 
evidenced bj^ the fact that steadily the number of applications filed 
each year has increased, and as steadily the time required to adjudi- 
cate each case has also increased, until now, the corps staggers under 
a load it is well nigh impossible to carry. 

It is of little utility, perhaps, to discuss the reasons for this in- 
crease. It will be sufficient to merely note, in passing, that they 
are found in the fact that we are the most inventive people in the 
world ; that our industrial and commercial supremacy is in a consid- 
erable measure due to this fact, and the steady increase in our popu- 
lation brings with it the natural increase in the number of applica- 
tions filed each year. In 1840, there were 765 applications filed : in 
1860. over 7,000; in 1880, 23.000; in 1900, 41,000; in 1913, 
70,000. The examiners will, in the near future, be facing the stu- 
pendous task of examining a hundred thousand new cases a year. 



283 EIGHT TO AMEND. Rule 68 

Experience has shown that there is no such thing as an exhausted 
art. 

Even where there are lulls in the advance of some of the arts, 
these are more than offset by the sudden activity in others, brought 
about by the invention of some radically new thing. 

The invention of the wireless telegraph ; of the successful flying 
machine; of the automobile, have resulted in a flood of applications 
for inventions in the nature of improvements and refinements, all 
having their bearing upon the creation of the eventually practical, 
commercial form of apparatus. 

These pioneer inventions also bring about an increased activity in 
a large number of related arts. 

A wireless telegraph station must have its source of high frequency 
current, its structural towers of great height, its special conductors of 
high insulation. In fact, these new conditions have brought about an 
increased activity in almost every branch of the electrical art. 

A flying machine and an automobile must each have a gas engine, 
with its electric igniting means, its gas mixing apparatus, and its 
multitude of related devices pertaining to many mechanical and 
metallurgy arts. All these take on special designs and refinements 
incident to their nevy^ use, and bring their multitude of applications 
to the various divisions of the office having in charge the cases re- 
lating to these various arts. 

The art that must be searched is increasing by leaps and bounds, 
and reclassiification, imperative as it is, and helpful as it is, can not 
solve this part of the problem, and is only a partial, though welcome 
aid. 

The complexity of the subject-matter of the applications is ever 
increasing. The fact that more and more of the complicated manual 
operations and processes are being accomplished by machinery, and 
that existing machinery is being more and more refined, made auto- 
matic, and made to do things requiring almost a human intelligence, 
with a minimum of supervision, brings about this result. 

There has also grown up a class of people who are desirous of a 
patent of some sort, of any sort, who keep an application which is 
fairly anticipated before the Examiner as long as possible, hoping 
by some argument or shift, or amendment, to fimd some slight point 
on which to hang an allowable claim, or to weary or argue the Ex- 
aminer into allowing some sort of a claim, so that counsel may ob- 
tain his fee, or satisfy an uninformed client or a client who is in- 
different to the validity of his patent but wishes to mark his device 
patented merely for the intimidating effect upon would-be rivals. 

It is plain enough, therefore, that in the near future the work of 
the examining corps will not grow less. The situation, as we are all 
aware, has resulted in the cases awaiting action reaching the some- 
what startling number of over 25,000. 

There are several very cogent reasons why applications should be 
speedily brought to a final adjudication. 

Applications long pending are a source of scandal and abuse. 
Often they do not embody the inventions in commercial form; they 
are kept pending in the office while others, ignorant of them, and 
therefore obtaining no aid from them, invent and produce successful 
devices, create a commercial value and status at great expense and 
risk, only to find that the owner of the long pending application has 
placed therein a claim dominating all that the later inventors have 
done, has issued the patent, and by legal process lays tribute upon 



Rule 68 EIGHT TO AMEND. 284 



the labors and the rewards of the later innocent inventors. Such a 
proceeding is so repugnant to justice and equity that this office is 
warranted in doing all it can to prevent such applications from being 
kept pending during long periods. 

Further, by removing the cause, legislation honestly intended to 
reach this class of cases, but also doing great harm to inventors whose 
applications are necessarily delayed in the office, will be rendered 
needless. 

The long pendency of a large number of applications before the 
office, by consuming its time in reconsidering them over and over, 
renders the period before a new application is reached for the tfirst 
examination so long that the inventor frequently suffers great loss. 
The art may pass beyond his invention. He may lose his oppor- 
tunity to sell. He dare not incur the expense incident to manufac- 
ture because of lack of protection. Having no indication of the atti- 
tude of the office, his commercial interests, so far as that invention 
is concerned, are entirel}' halted. 

The foregoing considerations are sufficient to show that the office 
has reached a condition that may be regarded as almost critical, and 
one that fully justifies it in adopting any means, not inconsistent with 
law, and which will not injure the rights of inventors, that will en- 
able the corps to reduce the number of times applications must be re- 
considered, the period they may be kept pending, and the number 
awaiting action. 

How is this to be done? 

I shall not consider here possible future legislation, but will con- 
sider only what can be done with the means at hand. 

The standard of work must be maintained. If the examination 
and adjudication of applications are to be worth while, are to pos- 
sess any real value justifying the enormous cost involved, the work 
can not be slighted. Enough patents, more than enough, in spite 
of the best we can do, are declared invalid in whole or in part. 

It is believed there is room for improvement in a conservation of 
energy. 

I am reminded of a youth whom I knew in my younger days, who 
was wont to contest in foot races. When he was in full action, he 
had such a habit of waving his arms and moving his body up and 
down that he had too little energy or time left for making progress 
forward. He always came in last. It has seemed possible the office 
sometimes progressed a little like this youth ; that it takes too many 
unnecessary actions, and the following suggestions are made, with 
a good deal of diffidence, in the hope that some economy of time and 
effort may be realized. 

In the 'first examination of the application, if the action is to go 
to the merits, let it be a complete one. 

In matters of form all objections should, so far as possible, be 
embodied in the first office letter, and be kept before the applicant 
in subsequent letters, if necessary, by simple reference to the first 
letter. This generally enables them to be all out of the way by the 
time the matters of merit are determined. I recall a letter received 
in a division in which I was an assistant many years ago, which read 
something like this: "The informalities and objections, which seem 
to increase in number with each reexamination of this case, have, we 
hope, all been cured." 

Just a word here about formal objections. It is a well-recognized 
fact that a great many are made that are subsequently waived. Bear- 



285 RIGHT TO AMEND. Rule 68 



ing in mind the specification and drawing are addressed to those ordi- 
narily skilled in the art, and they should be clear and understandable, 
yet so few formal objections should be made as is consistent with 
this ultimate end. Merely because the Examiner would state a mat- 
ter differently, or could even state it better, were he writing the de- 
scription, is no reason for requiring revision or change. If the mat- 
ter is not incorrect, is not misleading, and the meaning of the in- 
ventor is plain, objection should, ordinarily, not be made. The Exam- 
iner should be sure his formal objections are really necessary. This 
saves time, argument and friction. 

Before making a search for anticipatory art, the application and 
the invention should be fully understood. It pays to take time to fully 
and completely comprehend the disclosure every time the case is 
acted upon. Then the ;first search should be as nearly complete as it is 
possible to make it. Not only the broadest and the narrowest claims 
should be held ,in mind in searching, but the invention, the thing it- 
self, and its functions should be held in view. Where the invention 
is simple, and fully comprehended, a second search is rarely necessary. 
In the more complex and extensive cases, however, second or even 
third searches are often necessary, it is true, but even here the gain 
of a complete search is proportionally great, and second searches 
will be proportionally fewer. 

In regard to the search : 

It is said all men are equal before the law. Someone has added, 
"this is true, however, only in theory." The same is true of claims. 

A narrow claim limited to the precise embodiment of the in- 
vention disclosed is much less likely to be anticipated by anything 
found outside the class where the case belongs. A search on such a 
claim, therefore, should seldom be prosecuted beyond rather restricted 
limits. 

Further, a narrow structural claim is seldom sued upon. An 
alleged infringer almost always adopts a modification and escapes 
the terms of such a claim. Also courts are very apt to sustain a 
specific claim where an infringer uses the very same thing on which 
it is based. 

For these reasons, therefore, the narrow structural claim is not 
so important, is of less value and is much less frequently heard of 
after being once granted. 

It is the broad claim that is important. It is this claim that 
dominates an art, that spreads over the territory that others may 
seek to occupy. It is almost always this type of claim that is broughti 
before a court, and by which the plaintiff seeks to restrain an alleged 
infringer who uses something different. 

This type of claim is valuable, if it is good, and is harmful if it 
is invalid. The inventor should have it, if he is entitled to it, and it 
should be denied him if it is not rightly his. Such a claim should 
be more carefully weighed. The chance of anticipating such a claim 
outside the class where the case belongs is proportionally great. 
Before searching in any place, however, the Examiner should first 
weigh the question as to whether, if he found something there, it 
would be in an analogous art and would be a proper reference. 

Where an incomplete search is made, the Examiner takes very 
nearly as much time to make it and fully as much to adjudicate 
the claims on the art he finds as if he made a complete search. 
The attorney, in response, amends his case to define from the art 
found. The Examiner reviews the case, possibly months later and 



Rule 68 EIGHT TO AMEND. 286 



after he has forgotten both the case and how faithfully he searched 
it. He will usually research the ground previously covered as well 
as the additional ground he originally should have searched. Here 
is a great loss of time because he covers the same territory twice. 
The whole status of the case may now be changed. The first 
action taken in the case as well as the response of the attorney are 
rendered almost useless, possibly quite so. The application 'is now 
just where it should and would have been had a complete search 
been made at first. The practice of not making a full and com- 
plete search in the 'first instance has resulted in some attorneys mak- 
ing a practice of not attempting to really advance their cases until 
after the second or even third action by the Office. It is easy to 
see that time and energy are lost by such proceedings. 

The temptation is great, where an Examiner is driven at top 
speed to get oflr his cases so as to make the necessary weekly gain, 
to make an incomplete search, hoping that when the case comes 
up again he will have more time. But he merely puts off the evil 
day, and in the end does more work and gives more time in reach- 
ing a final adjudication of a given case than he otherwise would. 
When this case is multiplied by a hundred or even a thousand, the 
Examiner is, like the youth in the foot race, wasting a great deal 
of energy and time. When the search has been made and the 
Examiner comes to apply his references and adjudicate the claims, 
some of them may be squarely met by some references. Little time 
need be wasted here. Some claims, however, may require a com- 
bination of references. Here it is almost always best to explain, 
in as few words as possible, just how the combination is made. 
Even where the invention is simple, this is often advisable. It puts 
the matter specifically and squarely before the applicant and he 
can and must either point out why the combination is not proper 
or amend the claims. Where a reference lacks an element recited 
in a claim or must be modified in any way, even if ever so slightly, 
it is well to make an explanation, in a few specific words, just why 
the element of the claim which is not in the reference is regarded 
as insufficient, or just what the modification of the reference con- 
sists of. Where the subject-matter is more complicated, these ex- 
planations are correspondingly more advantageous. Where an at- 
torney is known to be well skilled in the art, less explanation is 
necessary. Where an inventor is prosecuting his own case but 
exhibits sufficient knowledge of patent law to warrant the Examiner 
in the belief that suggestions will enable the inventor to conclude 
his case without the aid of an attorney, the explanations should be 
correspondingly extended and made as specific as possible. 

This practice places before the inventor or his counsel all 
formal objections, the complete art, and the Examiner's interpreta- 
tion of the relation of such art to the application. It is evident the 
termination of the prosecution of the case before the Examiner need 
not be greatly prolonged. In the reasonably simple cases, where 
the entire scope of the invention can be readily seen and compre- 
hended, the third action by the Examiner with the same references 
before him should ordinarily be sufficient to conclude the case. 
There are some cases, where special reasons exist, in which further 
consideration will be necessary. The Examiner should exercise 
judgment in each case and not make any fixed rule. With the 
increase in the complexity and extent of the subject-matter of other 
cases, a reasonable increase in the number of actions is inevitable. 



287 EIGHT TO AMEND. Rule 68 



Even in these cases, however, the early citation of the complete art, 
and the notation of all formal objections, will go far to reduce the 
number of reconsiderations and reexaminations, while in no manner 
preventing the applicant obtaining full protection for all he has in- 
vented. 

Whenever final rejection is about to be taken, and whenever the 
condition of the case indicates such a course would be helpful, the 
Examiner should suggest in brief specific terms any amendment 
which he thinks would advance the case or render the claims al- 
lowable. 

There is a class of applications that I can not approach without 
realizing I am standing on holy ground. These are the old pending 
cases. Some have been pending, five, ten, fifteen, and even .twenty- 
fiive and more years. I know of no one, or half a dozen, things 
that will bring about so great an improvement in the condition of 
work before this Office as the conclusion of the pendency of these 
cases. Over and over again have they been examined. Unusually 
they have been amended once a year, some are so old that they 
fall under the old law of requiring amendment only once every two 
years. For a variety of reasons, some good and some bad, these 
cases have been kept in the Office, growing older, their records 
larger and more cumbersome, and adding very greatly to the labors 
of the examining corps. The annual amendments made to them 
have not been calculated or intended to really advance them toward 
a conclusion. The Examiners, too, have in the past despaired of 
making much advancement, and their annual actions have sometimes 
been less complete than they might have been. Until a compara- 
tively recent time the Examiners have felt helpless to solve this 
problem. 

Section 4904, R. S., states : "Whenever, on examination, any 
claim for a patent is rejected, the Commissioner shall notify the 
applicant thereof, giving him briefly the reasons for such rejections, 
together with such information and references as may be useful 
in judging of the propriety of renewing his application or of alter- 
ing his specification; and if, after receiving such notice, the appli- 
cant persists in his claim for a patent, with or without altering his 
specifications, the Commissioner shall order a reexamination of the 
case." 

Rule 68 is based on this statute and provides that an applicant 
"may amend as often as the Examiner presents new references or 
reasons for rejection." 

Section 4909, R. S., states : "Every applicant for a patent or 
for the reissue of a patent, any of the claims of which have been 
twice rejected . . . may appeal from the decision of the 
Primary Examiner." 

Rule 134, which is based on this statute, specifies : "There must 
have been two rejections of the claims as originally filed, or, if 
amended in matter of substance, of the amended claims, and all the 
claims must have been passed upon, . . . before the case can 
be appealed to the Examiners-in-Chief." 

These two sections of the statutes and these two rules have 
constituted the basis for a practice that existed from the adoption 
of the law, to almost the present time, and which was to the 
effect that an Examiner could never close the prosecution of a case 
before him so long as an applicant presented at each reconsideration 
at least one claim that was different in scope from any previously 



Rule 68 EIGHT TO AMEND. 288 



considered. When it is recalled that an application may have any- 
where from half a dozen to several hundred claims, it is at once 
apparent any skilled attorney could, under such practice, keep an 
application pending so long as he desired. 

This has been the cord that tied the hands of the Examiners 
and has rendered possible this great accumulation of old cases. 
By the decision in Ex parte Miller (139 O. G. 730), the cord was 
severed and the examining corps was relieved from this helpless con- 
dition which had become well-nigh intolerable. That decision is 
based upon the view, which is clear enough, that the statute does 
not contemplate nor require the repeated reconsideration of an 
application, dependent only upon the will of the applicant or the 
skill of his counsel in varying the language used to define the 
invention. 

That decision held : "Where the Examiner has held that certain 
claims are unpatentable and has fully advised the applicant of his 
reason for such holding and the latter, after reasonable prosecution 
of the case, has failed to so amend as to necessitate the citation 
of new references and has been unable by argument to convince 
the Examiner that he was in error, an issue is reached, and the 
Examiner is justified in refusing to accept further amendment and 
in finally rejecting the claims then of record in the case." 

This ruling, which has been subsequently fully upheld in Ex 
parte Perry (140 O. G. 1001), a second Ex parte Miller (150 O. 
G. 827), and Ex parte Lang (153 O. G. 1081), constituted a very 
marked departure from the old practice, in that it transferred from 
the applicant to the Examiner, the power to bring the prosecution 
of an application before the Examiner to a close. This at once 
made it possible for the corps to put a check upon what was be- 
coming, in some instances, a grave abuse of the latitude of the 
Office procedure. 

In explaining this holding of Ex parte Miller, Perry, etc., Mr. 
Billings pointed out that while it was true Rule 68 provided that 
an applicant had a right to amend as often as the Examiner pre- 
sented new references or reasons, this rule also made it incumbent 
upon the applicant in amending to "clearly point out all the novelty 
which he thinks the case presents in view of the art disclosed." 
It is a natural deduction that if an applicant really does this, when 
he amends, a condition will ordinarily be reached in one or two 
actions where the Examiner has no new references or reasons to 
present. 

Still the Examiners are not out of the wilderness. These old 
cases are often complex and extensive in subject-matter. It is not 
difficult, and the more complicated they are the easier it is, in 
amending them, to drive the Examiners to "new references or new 
reasons." This precludes the application of the Miller doctrine, 
in such instances, and brings them under Rule 68, giving applicants 
the right to further amend and argue. 

Many inventors aad attorneys, since the real condition of the 
Office and the possibility of stringent legislation being enacted have 
been made known to them by the Commissioner, have recognized 
the necessity, in the interests of all, for prompt action looking to 
a bringing to a conclusion these old cases, and have presented care- 
fully prepared amendments which have enabled the Office to con- 
siderably reduce the number of such cases. In passing it is worthy 
to remark that it is surprising and also gratifying to note the 



289 EIGHT TO AMEND. Rule 68 



extent to which it is possible to advance one of these old cases, 
by a carefully prepared amendment, without sacrificing any of the 
inventor's rights. 

There are, however, quite a number of these old cases where 
financial and other reasons impel the applicant to seek a further 
delay. Sometimes large rival concerns have many applications 
pending relating to a general subject or art, and are involved in 
many interferences which delay their cases in the office. Their in- 
terests are financially very great. Millions have been and are being 
expended in the production and perfection of these inventions. 
The securing of patents which will protect the owners in the use 
of such inventions is vital. To take out some of their patents, 
while so much is being litigated, and while rival concerns still have 
pending cases relating to analogous subject-matter, would be pro- 
ductive of enormous loss. These considerations must be given due 
weight. 

Some cases, in which a plea for further delay is made, it would ap- 
pear that counsel merely hopes, by repeating and impressing his argu- 
ments in various forms, to ;finally win over the Examiner. 

Whether rightly or not a good many attorneys do not wish to be 
denied the privilege of impressing their arguments on the Ex- 
aminer over and over again. This should not be necessary. If 
the applicant and the Examiner fully understand the case and the 
art, there is no necessity for this repeated review: 

Some few of these applicants whose cases have been long 
pending are undoubtedly actuated by motives similar to those which 
actuate the citizen who does not want to enlist. They hope that, 
by some hook or crook, to keep their cases going a year or two 
longer and by that time, they are trusting, the war may be over, 
and they will finally escape the firing line. 

So grave has become this evil of long pending cases, so great 
is the inertia of this load, so clearly is a remedy necessary to the 
preservation of our patent system and the interests of inventors 
and the public alike, that the Commissioner has seriously set about 
the work of bringing these cases to a conclusion. Results are 
plainly apparent, but the end has not been reached. Eager to afford 
these tardy prosecutors an additional opportunity to protect their 
inventions as he is, yet he has firmly impressed upon these appli- 
cants that he will not permit any needless delay. To that end he 
has sought to limit amendments to those that will not longer delay 
the case. He has taken over the personal consideration of all 
amendments to applications pending five years or over. 

"If an amendment is filed in such a case which puts it in con- 
dition for allowance or final rejection, it will be accepted, but if the 
amendment does neither of these two things, as, for example, when 
an applicant undertakes to put in new claims the amendment will 
be considered without being entered and the applicant notified by 
the Commissioner of the character of a supplemental amendment 
which will put the case in condition for allowance or final rejection. 
If the applicant fails to file such supplemental amendment, the 
amendment which has already been- filed will be refused admission 
and the case when the year is up will be held abandoned." (Com- 
missioner's address to the Patent Bar Association, Chicago, 111., 
Nov. 19, 1914, Sci. Am. Dec. 12, 1914, p. 491.) 

It will be readily apparent that this plan is going to bring the 
prosecution of this class of cases to a close, yet there is given each 



Eule 68 ■ BIGHT TO AMEND. 290 



applicant, after all the opportunities he has already had, a still 
furtiier opportunity to draw his claims to cover what he believes he 
has invented, and if he can not agree with the Examiner to obtain 
the judgment of the higher tribunals. Even where an applicant 
seeks to expand his case anew, at this late date, by claiming some- 
thing he has not claimed liefore, thereby necessitating "new ref- 
erences or reasons of rejection" the office goes so far as to ex- 
amine this new amendment and indicate to him what part, if any, 
is allowable, and gives him an opportunity to incorporate this part 
in his patent. 

It would seem that this plan is as liberal as is possible, consistent 
with the end had in view, and that no one can justly claim his 
rights have not been safeguarded. 

Returning to the consideration of applications generally, there is 
thought to be some loss of time due to what may be called debat- 
alile rejections. There is no need to discuss here practices that are 
settknl, grounds of repection that are itixed, but there are several 
grounds of rejection that are very frequently used and possibly a 
little more uniformity throughout the corps would be an economy 
of time. 

I have read office letters rejecting claims on the ground thej'- 
recite aggregations, where the claims would seem to be for true 
combinations, which were merely old combinations. Perhaps the 
uUimate end, the amendment of the claim, is fimally reached, but 
often such rejection precipitates argument and needless waste of 
time. 

While the United States Suiireme Court in the decisions of 
Hailes v. VanWormer (20 Wall. 368) ; Florsheim v. Schelling 
(53 O. G. 1737); .Adams v. Bellaire' Stamping Co. (57 O. G. 1280); 
Richards v. Chase Elevator Co. (71 O. G. 1456) ; Reckendorfer v. 
Faber (92 U. S. 347), and the U. S. C. C. of Appeals. Seventh 
Circuit, in the case of Deere and Co. v. Rock Island Plow Co. 
(82 O. G. 1561), discuss very fully this question of aggregation 
versus comlnnation. the following from a decision of the Ex- 
aminers-in-Chief, made in a recent case, is so pertinent that I 
take the lil)erty of quoting it. 

"In the first place, it should be observed that the problem of 
whether a given claim sets out a patentable combination or an 
aggregation is not to be solved by the citation of references. A 
true combination of elements, working together under a cooperative 
law, and producing a given result, remains a true combination for 
all time, irrespective of the antiquity of its original creation, . . . 
the ground of rejection which is proper is not that the combination 
is illegitimate, but that it is old." 

The question settles itself by determining whether the elements 
named in the claim cooperate, ivork together, though not necessarily 
sinuiltaneously, but so that by virtue of what they together ac- 
complish, a different result is secured from what would be secured 
if the elements were used separately. As was said by the Supreme 
Court in the Reckendorfer v. Faber case, supra: "There must be a 
new result produced by their union ; if it is not so it is only an 
aggregation of separate elements." This case was based on a lead 
pencil with a rubber eraser at one end. The court aptly pointed out 
that the rubber did not perform any function in connection with the 
writing. It remained inoperative, and could as well be absent. So 
in erasing the marks, the pencil remained inactive, did nothing, could 



291 EIGHT TO AMEND. Rule 68 



as well be absent. These two things never worked together, and 
never accomplished any joint function or result. 

A second ground of rejection that gives rise to much trouble and 
creates considerable argument and friction is applied to claims for 
alleged machine or apparatus methods or processes as distinguished 
from chemical and article methods. 

It is not the purpose of this paper to discuss this class of claims 
from an academic viewpoint or quote from the many learned ex- 
pounders of this subject. Purther, the matter has been ably 
treated in a previous paper presented to this body. It is desired 
here, however, to make, if possible, a few practical, rough sugges- 
tions which may be helpful in determining whether a claim is for a 
true method or for the function of the apparatus. 

The authorities are pretty well settled that the old definition of 
the United States Supreme Court in Cochrane v. Deener (11 O. 
G. 687), stands as about the most tangilole and workaljle definition 
yet given. There must be present an act or a series of acts and 
they must be performed upon something to change it to a different 
state or thing. Remembering that only so-called machine processes 
are under consideration, and that the main difficulty is to distinguish 
them from the function of the machine or apparatus, it may be 
helpful to first note that the claim does not recite specific means or 
mechanism. If this specific mechanism is necessary to support the 
alleged steps, it is probable these latter are inevitably the function 
of such mechanism. It is well to try to discover what the step is 
or what the series of steps are ; to recognize them in the language 
used in the claim. Then the' thing they are performed on should, if 
possible, be identified. This may be the electric current, as in the 
Telephone Cases (126 U. S. 1532), and O'Reilly v. Morse (15 
Howard 62). If these can be identified it is generally easy enough 
to determine whether the steps are so tied to specific mechanism as 
to be but its function, or whether they can be performed, within the 
language or terms of the claim, by different mechanisms differently 
organized, or, if the nature pf the steps permit, by hand. While no 
function can be carried out without some means to do it, yet the 
function must be distinct from the means, from its practical em- 
bodiment, and its immediate effect. There must be some other 
means, with some other embodiment, to which this : function is 
common. Robinson on Patents cites the example of smoothing 
something, and explains how different things, like running water, 
a single knife, a sliding weight, a group of revolving knives,' may 
perform this function. The machine step of smoothing, therefore, 
is performed by some means, but is not a function of any specific 
means, but is a function of several different mechanisms or means, 
and is a proper step of a method. Again, this author cites the 
function of exploding or igniting a substance, and notes this may 
be accomplished by different means, as a red hot iron, a flame, the 
electric spark, etc. The function is common to these different de- 
vices, and also these different devices can operate without producing 
the function of exploding or igniting a substance. These things 
have separate existence, the means is a permanent thing and the 
function is a transient, intangible thing. 

If these principles concerning this class of claims can be had in 
mind considerable time can be saved, both in determining when a 
claim should be rejected and in making suggestions to an applicant 
who discloses but is not succeeding in properly claiming a method 
of this character. 



Rule 68 RIGHT TO AMEND. * 292 



There is another ground of rejection which is not uniformly 
interpreted throughout the office. This is that the claim is functional 
in that it fails to recite the means for accomplishing the resultsi 
specified. Sometimes the mere length of a functional statement, 
predicated upon a properly included means, is made the basis of 
rejection. Obviously this is in error. 

The so-called "whereby" clauses, and those beginning with the 
word "adapted," are often found to be unsupported by the inclusion 
in the claim of the means for accomplishing these functions. In 
such cases, the means should be included. But the statement of 
means, mechanisms, or devices, accompanied by their functions, 
constitute the long accepted manner of drawing claims for mechani- 
cal inventions. If the elements are recited, the length of the func- 
tional clause is of no moment. If recited generically, the claim is 
merely broad and if otherwise patentable is allowable. 

There is a class of claims wherein the entire invention is recited 
in the generic words "means," mechanism, or devices, accompanied 
by the functions of such means, or mechanism, without deifming any- 
where in the claim the structural nature of the means or mechan- 
isms or devices. Of course, these claims are as broadly drawn as 
possible, and in language, cover any and all means for accomplishing 
these functions, cover means substantially different. 

There are at least two views held in this Office as to such claims. 
One is that they are too broad, are broader than the invenition, and 
that they are therefore unpatentable. Beside several Commissioner's 
decisions there are decisions of the United States courts which look 
to the support of this view. (Consolidated Electric Light Co. v. 
McKeesport Electric Light Co., U. S. Supreme Court, 159 U. S. 465'; 
Madison v. Campbell, U. S. C. C, 78 Fed. Rep. 910; Wilson Trolley 
Catcher Co. v. Frank Ridlon Co^ U. S. C. C. of Appeals, P^irst 
Circuit, 159 O. G. 244; Ex parte Denning, 26 O. G. 1207; Ex parte 
Knudson, 72 O. G. 589; Ex parte Pacholder, 51 O. G. 295.) 

The other view is that no matter what the breadth of terms used 
in the claim, an inventor is only entitled to what he has invented 
and produced, and substantially its equivalents and, if the invention 
is of a pioneer character, the range of equivalents will be propor- 
tionally broadened when, on proofs, this is made to appear. These 
claims, if they can not be met by references, are, therefore, to be 
allowed. 

The cases where courts have held such claims void on this 
ground alone, of being liroader than the invention, are so few, and 
modern judges are so prone to construe claims to save a really 
meritorious invention that the question is one of no very great 
moment. 

There is one other ground of rejection of which mention may be 
made. This is upon the so-called Hawley doctrine. This doctrine 
was 'first emphasized and made prominent in the decision of the 
Court of y\ppeals of the District of Columliia, In re Hawley (121 
O. G. 691), although it is but a repetition of the substance of Ex 
parte Griffith (85 O. G. 936). This holding has been confianed by 
the same court In re McNeil (20 Ct. App. D. C. 294), and In re 
Ratican (162 O. G. 540). Later the Circuit Court of Appeals, Third 
Circuit, held a claim void on this ground in the case of Langan v. 
Warren Axe and Tool Co. (166 O. G. 986). 

This doctrine is to the effect that where the combination re- 
cited in the claim is old and the distinction over the prior art 
resides in one element only of the combination and does not result 



293 EIGHT TO AMEND. Rule 68 



in a modified or improved action of the other elements of the com- 
bination the claim is unpatentable and should be limited to the 
element per se. 

The doctrine has been quite extensively applied by some Ex- 
aminers and but little used by others. It is a proper ground of 
rejection when properly applied. 

It is believed the vital determining factor is whether the ele- 
ment which has been improved constitutes a complete thing itself 
capable of separate and independent use, or one that has acquired 
a distinct status in the arts and trades. If neither of these condi- 
tions is present, it is doubtful if the doctrine applies. 

In the Hawley case, the improvement was in a tape to be used 
in a recording mechanism. The latter was not modified in any 
way and was admittedly old. Obviously the tape fulfilled the con- 
ditions above noted. No one would buy a new recorder every time 
he used up the tape, any more than one would buy a new type- 
writer machine every time he used up his supply of paper. The 
tape was clearly a separate subject of invention, a separate article of 
manufacture and sale and should not have been claimed in com- 
bination with the old recorder. 

In the Ratican case, the invention resided in a nozzle for a street 
washing machine, otherwise old. It is plain enough the nozzle was 
a separate, complete unitary thing, did not in any manner change 
the operation of any part of the machine, was a separate subject of 
manufacture and sale. Obviously no one, wishing a new nozzle, 
would purchase an entire new street washing machine. 

The case of Langan v. Warren Axe and Tool Co. is a very 
much more important one. The decision was rendered by the 
United States Circuit Court of Appeals, the patent was already 
granted and the claim was held invalid. 

There exists some diiiference of opinion as to whether this ruling 
may be said to uphold the so-called Hawley doctrine. There was a 
very plain discrepancy between the statement of invention in the 
specification and the structure covered by the claim. The specifica- 
tion made it ver}^ clear that the patentee had invented a new kind 
of grab-hook, and merely described how such hooks were to be 
used, in pairs, with a draft device in 'skidding logs. The claim, 
however, was for the combination of a pair of hooks with the draft 
device. The novel details of the hook were, however, specified in 
the claim. 

The court emphaized this lack of consistency between the state- 
ment of invention in the description, which was that applicant had 
merely improved the hook, and the statement of the claim, and in 
doing so said: "There is no suggestion that any part of the 
patentee's invention resides in the combination of the grab-hooks 
and the draft appliance. The connection between the grab-hooks 
and the draft appliance by means of links or claims is mentioned, but 
such connection was as old as grab-hooks themselves, and the 
patentee expressly states that his invention consists, not in any such 
combination, but in the particular and peculiar form of hook. . . . 
Not only is the claim for a combination foreign to what is set forth 
in the specification, but there is no new coaction or cooperation of 
the elements of the combination. The grab-hooks and the draft 
appliance of the patent, in combination, coact as grab-hooks and 
draft appliances have always done. The grab-hook of the patent, by 
reason of its peculiar construction and form, is very probably an 
improvement of no little utility. But the patentee can not, merely 



Rule 69 REQUEST FOE RECONSIDERATION". 294 

because of this fact, have a patent for a combination, which shall 
have, as one of its elements, a pair of such grab-hooks. He did not 
invent the combination. He invented, if he invented anything, an 
improved grab-hook." 

On being urged by counsel to construe the claim as for the hook 
alone, the court said : "Manifestly, we can not so construe it. The 
claim is for a combination of grab-hooks, of a peculiar form, and a 
draft device. We are not at liberty to distort its plain language." 

Whatever may be the view as to the general effect of this deci- 
sion, the fact is plain enough that this patentee lost his invention 
because he did not claim the hook alone, because he claimed it in the 
old combination which it did not affect in any new way. 

It is hardly to be presumed the court would have found the 
claim valid if the patent itself had not contajned the inconsistencies 
noted by the court, provided the proofs adduced at the trial had 
been such as to set forth this same state of facts. 

This decision is sufficiently suggestive, that in plain cases, the 
doctrine should be applied. 

In the usuual house door-bell arrangement, in use all over this 
city, there is a push button switch, a bell, a battery, and the wire 
conductors. Each is a separate subject of invention and has a dis- 
tinct status in the art and trades. An inventor may improve the 
bell, the switch, the battery, or the wires. None of these improve- 
ments would affect the mode of operation of the other elements, 
and the claims should be conlined to whichever element — the switch, 
the bell, the battery or the conductors — that is improved. A com- 
bination claim should not be allowed. 

■ But if an invention is made in a part of the switch, or the bell, 
or the battery, which part has no general utility, no separate status, 
it is doubtful if the Office is warranted in objecting to a claim that 
includes the entire switch or the entire bell, or battery. These are 
unitary things, and to carry the Hawley doctrine to their details of 
structure constitutes a refinement of procedure that can only result 
in harmful confusion, friction and delay. 

An adherence to this 'firmer ground in the application of this 
doctrine will in no way endanger the validity of any grant, but will 
save much time and needless argument. 

In conclusion, I leave with you, therefore, this suggestion : 

If this great and ever-increasing quantity of work is to be 
carried on at all, if there is not to be such an accumulation of 
pending applications as will cause the whole examining system to 
fall of its own weight, there must be a greater uniformity of 
practice on the part of the various Examiners, there must be fewer 
needless objections, fewer needless rejections, better first searches, 
more carefully considered actions, both on the part of the Examiners 
and on the part of the applicants as well, and a more prompt con- 
clusion of the pendency of cases before the corps. 

By Win. A. Kinnan, Examiner, Division Sixteen. 

Rule 69. Request for Reconsideration. 

In order to be entitled to the reexamination or re- 
consideration provided for in Rules 65 and 67 the 
applicant must make request therefor in writing, and 
he must distinctly and specifically point out the sup- 



295 REQUEST FOE RECONSIDERATIOlSr. Rule 69 

posed errors in the examiner's action; the applicant 
must respond to every ground of objection and rejec- 
tion of the prior office action except as provided in 
Rule 64, and the applicant's action must appear 
throughout to be a bona fide attempt to advance the 
case to final action. The mere allegation that the 
examiner has erred will not be received as a proper . 
reason for such reexamination or reconsideration. 

CONSTRUCTIONS. 

See notes to Rule 68. 

A broadening of the claims without explanation is im- 
proper, if the Examiner objects to the multiplicity of claims 
this should be replied to. 

Creviling, 197 0. G. 779. 
Amendment bv telegram confirmed by letter is proper. 

Whear, 197" 0. G. 534. 
A petition to set aside a final rejection dismissed as pre- 
mature where no request had been made of the Primary 
Examiner to withdraw that rejection. 
Lawton, 172 0. G. 259. 
The claims rejected on three references, one claim with- 
drawn. The other claim rejected on two of said references. 
Good final rejection. 

Guitry, 162 0. G. 537. 
It is not sufficient that applicant distinguishes his device 
from one of the references it must be from all. 
Inman, 160 0. G. 1038. 
If applicant does not consider all the references cited and 
point out where in his opinion the references do not apply 
the action is not responsive and the case is abandoned. 
Sachs, 157 0. G. 755. 
Applicant was entitled to have the claims considered and 
the reasons of rejection fully stated and such action should 
now be taken. 

Pledger, Jr., and Campbell, 157 0. G. 486. 
In Ex parte Perry the practice was condemned of re- 
peatedly filing amendments in the hope of wearing the Ex- 
aminer into allowing a claim upon the ground that because of 
its specific character it can do no harm. 

Pledger, Jr., and Campbell, 157 0. G. 486. 
It is clear that a mere request for a reconsideration is use- 
less unless accompanied by some statement or argument which 



Rule 69 BEQUEST FOR EECONSIDEEATION. 296 

controverts rulings made by the Examiner or throw light upon 
the facts of the casCj, 

Einstein, 121 0. G. 1675. 
A mere request for a reconsideration is not sufficient. 

Euthinburg, 121 0. G. 337. 
The applicant must give reasons why he thinks the Ex- 
aminer erred, for lack of which reasons the case may be held 
to be abandoned. 

Linde, 115 0. G. 1329. 
The questions have not been presented for reconsideration 
with the specification of errors as required by the rules and 
without a request for a reconsideration applicant is not en- 
titled to have the matter reviewed. 
Gaily, 115 0. G. 802. 
Action must be responsive. 
Parkes, 113 0. G. 2213. 
It is not inconsistent with section 4903 to require applicant 
to give his reasons for requesting a reconsideration. 
Alton, 113 0. G. 1968-1969. 
Where applicant made a slight amendment to one of the 
claims and discussed various references it was properly con- 
strued by the Examiner as a request for a reconsideration. 
Leilich, 108 0. G. 561. 
A communication from applicant saying "Such action as 
will permit appeal is requested^' is not a compliance with this 
rule. 

Lewis, 108 0. G. 559. 
The applicant is required to state why he thinks the Ex- 
aminer has erred. 

Tyson, 1902 C. D. 476, 101 0. G. 3105. 
Must point out the supposed error in Examiner's action. 

Shone, 99 0. G. 863. 
Last clause reaffirmed. 

McKnight, 1901 C. D. 238, 97 0. G. 2742. 
The burden of proof is upon applicant to establish by proof 
which is clear and conclusive the patentability of the inven- 
tion as claimed (this is a case of a bill in equity). 
Durham v. Seymour, Com., 71 0. G. 457. 
Where applicant claimed a method of transmitting speech 
by intermittent impulses he must show: First, that his appa- 
ratus makes and breaks contact; second, that this action 
causes the articulate speech. 
Barney, 1890 C. D. 171. 
See also, 

Krejci, 121 0. G. 1011. 



297 AMENDMENTS TO CORRESPOND. Rule 70 

Rule 70. Amendments to Correspond to Original 
Drawing or Specification. 

In original applications all amendments of the 
drawings or specifications, and all additions thereto, 
must conform to at least one of them as it was at the 
time of the filing of the application. Matter not found 
in either, involving a departure from the original in- 
vention, can not be added to the application even 
though supported by a supplemental oath, and can 
be shown or claimed only in a separate application. 

HISTORY. 

Eule 35 of 1869 reads in part as follows : "All amend- 
ments of the model, drawings, or specification, must conform 
to at least one of them as they were at the time of the filing 
of the application." 

In 1870 the words "in the case of original applications" 
were added after "specification." 

In 1871, Eule 32 read in part as follows : "All amend- 
ments of the model, drawings, or specification, in the case of 
original applications which are capable of illustration by 
drawing or model, must conform to at least one of them as 
they were at the time of the filing of the application, further 
changes than this can only be made by filing a new applica- 
tion. If the invention does not admit of illustration by draw- 
ing, amendment of the specification may be made upon proof 
satisfactory to the Commissioner that the proposed amend- 
ment is a part of the original invention." 

In 1873, the words "involving a departure from the original 
invention" were inserted after "further changes than this." 

In 1879, Eule 69 read substantially as present Eule 70, ex- 
cept that substantially the last sentence of the previous rule 
was retained, with the addition of the words "or model" after 
"drawing" and the clause "the affidavits prescribed in Eule 47 
may or may not be sufficient" was added. The affidavits re- 
ferred to were "supplemental oaths." 

The present rule was made in 1892. 

See notes to Eules 66, 68 and 69. 



Rule 70 AMENDMENTS TO CORRESPOND. 298 

CONSTRUCTIONS. 

We do not see that the plaintiff is bound to find in his 
original claims one which is substantially the same as his 
amended claim, if his original application did cover his 
amended claim in the sense that it included that claim and 
more. 

Motion Picture Co. v. Colehoff Co., 248 Fed. 229. 
If rejected for new matter the new matter should be defi- 
nitely pointed out. 

Ferguson, 229 0. G. 939. 
An applicant may amend to make his case correspond with 
the one of which it is a division. 
Avers, 220 0. G. 1375. 
In determining whether matter introduced by way of amend- 
ment is new matter the original drawings are to be under- 
stood with such variations in form, shape, and proportions as 
common sense and mechanical skill in that art would sug- 
gest (on the verge). 

Mine & Smelter Supply Co. v. Braeckel Concentrator Co., 
197 Fed. 897. 
An elaborate discussion of this subject matter is included 
in 

Mine & Smelter Supply Co. v. Braeckel Concentrator Co., 
197 Fed. 897. 
The additional matter in the second was a mere amplifica- 
tion of the disclosure of the first. 

Clark Blade & Razor Co. v. Gillette Eazor Co., 194 Fed. 
421 and 
The cases of Orewiler, 170 0. G. 481 and Hilliker, 183 0. 
G. 1035, were not intended to apply to cases in which appli- 
cant filed his own case and afterward employed an attorney 
such as here are in question. The substitute specification and 
drawing should be received and considered. 
Clifford, 193 0. G. 511. 
Eejected for want of operativeness on amendment because 
of iiew matter reviewable on appeal and not by petition. 
Thomas. 191 0. G. 832. 
The fact that an amendment contains new matter is no 
reason for refusing to enter it. It should be entered a re- 
quirement made to eliminate new matter and any claims based 
thereon rejected. 

Meyers, 184 0. G. 802. 
This holding which is in substance that the disclosure as it 
stands is insufficient to support the claims, but that it may 



299 AMENDMENTS TO COEKESPOND. Rule 70 

be amended in such a way that it will support them is clearly 
inconsistent. 

Seacombe v. Burks, 1912 C. D. 370, 182 0. G. 974. 
Claims to apparatus and product may apparently be intro- 
duced into a method apparatus. 

Edison v. American Mutoscope Co., 110 F. E. 660. 
An applicant can not insert matter from an abandoned case. 

Hagey, 173 0. G. 1081. 
A claim may afford the basis for an amendment of the 
drawinfr. 

160 0. G. 775. 
Question of new matter appealable to the Examiners-in- 
Chief. 

Fadern and Berman, 155 0. G. 553. 
An applicant permitted to change his application from a 
design to an article of manufacture where it is shown that 
this was the original intention of the applicant. 
Saunders, Jr., 131 0. G. 1164. 
The statement in the original specification that the cutter 
20 is secured to the leg of the landside by a pivot or bolt, 
when taken in connection with the statement in claim 5 that 
the cutter is adjustable is believed to constitute a sufficient 
disclosure of the adjustable feature of this invention to war- 
rant amendment to the drawing showing an ordinary means 
for adjusting said cutter. 

Sylevestersen, 129 0. G. 3160. 
As there is no suggestion in the application relative to the 
omission of this part, a claim specifying a mode of operation 
that can be secured only when said part is omitted consti- 
tutes new matter. 

Scott V. Southgate, 1906 C. D. 491, 125 0. G. 1703. 
A drawing showing the tool-shank in any other form than 
that originally shown inadmissible although such form might 
also result from a twisting operation. 

Freund, 1905 C. D. 477, 119 0. G. 651. 
Where a claim, inserted by amendment, includes matter 
not originally disclosed, held that if the change from the 
original is an obvious one which would occur to any one it is 
not patentable, and if it is not obvious it constitutes new 
matter. 

Scott, 1905 C. D. 665, 117 0. G. 278. 
Applicant is not permitted at any time to introduce new 
matter into his application and obtain therefor a date as of 
the date of the original application. 

It is the duty of the Commissioner of Patents to reject 



Rule 70 amendments to coreespond. 300 

all claims, a basis for which is not found in the application 
as originally filed. 

Dilg, 1905 C. D. 620, 115 0. G. 1067. 
Mere clerical or draftsman's errors may be corrected where 
the errors are clear from the application itself; but changes 
can not be made in the application based upon allegations of 
fact not shown by the record. Not even to make the device 
disclosed operative. 

Willits, 1905 C. D. 107, 115 0. G. 1064. 
Mere clerical or draftsman's- errors may be corrected where 
the errors are clear from the application itself; but changes 
can not be made in the application based upon allegations of 
fact not shown by the record, not even to make the device 
disclosed operative. 

Willets, 115 0. G. 1064. 
May not amend to claim a species not originally claimed. 

Lillie, 1905 C. D. 15, 114 0. G. 541. 
The contention that applicant has the right to amend the 
original disclosure by the addition thereto of a specific struc- 
ture if the same is not new, and falls within the scope of 
general statements in the original specification is fallacious 
as (e. g.) the patentability of combination claims drawn to- 
include the added parts would be independent of the novelty 
of these parts. 

Scott, 1904 C. D. 4, 114 0. G. .260. 
The description of a specific form briefly referred to in the 
original specification may not be inserted. 

Mothes, 1900 C. D. 500, 113 0. G. 1146. 
In Luger v. Browning, 10 0. G. 1123, it was held that 
when new matter is introduced into an application it can not 
be allowed to dominate previous claims of another applicant ; 
but when matter has been disclosed, but not claimed, it is 
proper to include it in claims, and they may take precedence 
over' previous claims of another applicant. 

Galley v. Brand, 1904 C. D. 488, 113 0. G. 851. 
While the omission of elements in some cases may involve 
new matter the omission of unnecessary elements does not. 

Smith & Hoyland, 1900 C. D. 176, 93 0. G. 939. 
The strips should be placed at right angles to their present 
position. The device as now illustrated is inoperative, and it 
seems obvious that the defects in the illustration are such as 
could only have occurred through a clerical error in making 
the drawing. Amendment permitted. 

Bailey, 1898 C. D. 16, 82 0. G. 894. 



301 AMENDMENTS TO CORKESPOND. Rule 70 

The objection to new matter can not be avoided by chang- 
ing the date of filing to that of the proposed amendment. 
Kinney, 1904 C. D. 240, 110 0. G. 2235. 
A rejection on the ground tliat the amendment involves 
new matter, appealable to ihe Examiner-in-Chief, and the 
question should be determined before discussing the question 
of cancellation of the matter. 

Schmidt, 1904 C. D. 165, 110 0. G. 603. 
Applicant may not insert a third specific form of the inven- 
tion which was not in the papers as originally filed. 
Butcher, 1904 C. D. 60, 108 0. G. 1588. 
A change from a sole to a joint application can only be 
made by a new application. 

Gordon, 1904 C. D. 20, 108 0. G. 561. 
Matter can not be read into a case or inserted by way of 
amendment merely because it was invented before the appli- 
cation was filed and was intended to be included. 

Dow V. Converse, 1903 C. D. 404, 106 0. G. 2291. 
An applicant is not entitled to shift his ground from the 
article to the process, whether or not both inventions were 
disclosed originally. 

Christensen, 1903 C. D. 256, 105 0. G. 1261. 
When an amendment is filed which in the judgment of the 
Examiner substantially varies the scope of the application as 
originally filed and necessitates a change in the drawings, the 
amendment should be entered and rejected on the ground of 
new matter and for all other reasons which bar its patent- 
ability. 

The drawing should not be changed until question is settled. 
Luber, 1894 C. D. 47, 67 0. G. 529; Furness, 1903 C. 
D. 174, 104 0. G. 1655. 
Where the parts described will not operate as stated and it 
appears from the whole case that through a clerical error the 
parts were misnamed, an amendment correcting the error and 
adding a new figure to the drawing permitted. 
Larson, 1902 C. D. 452, 101 0. G. 2568. 
Where applicant showed and described two forms of the 
invention and his claims were broad enough to cover both 
forms, held that he was entitled to claim a specific form. 
"The original claims and description included both forms of 
the invention. The claims did not include one form to the 
exclusion of the other. Distinguished from Heaton, 15 0. G. 
1054. 

Plimpton, 1902 C. D. 452, 101 0. G. 2567. 
A claim was made for a washing machine and a combina- 



Rule 70 AMENDMENTS TO COEEESPOND. 302 

tion of such machine with a particular kind of hinge. These 
were rejected. Applicant was not permitted to insert a claim 
to the hinsfle alone, it being a differently classified invention. 

SwantWh, 1902 C. D. 377, 101 0. G. 1129. 
Two parts originally jointed together, amendment stating 
that they are practically integral, new matter. Where an ele- 
ment performs several functions the statement that it has 
only one function is inaccurate and involves new matter. 

Kieffer, 1902 C. D. 360, 101 0. G. 449. 
If the Examiner considers the matter sought to be intro- 
duced by amendment to be a departure from the original he 
should reject the application for this reason, from such a re- 
jection appeal lies to the Examiners-in-Chief. 

Keith, 1901 C. D. 155, 97 0. G. 551; Howlett, 1902 C. 
D. 338, 100 0. Ct. 2775. 
Where the applicant is dissatisfied with the original dis- 
closure and desires to take out the patent based upon another 
disclosure which he considers a better mode of applying the 
principle of the invention, the proper course to pursue is to 
file a new application. This discrepancy can not be cured by 
amendment. 

Heogh, 1902 C .D. 254, 100 0. G. 453. 
Matter in the specifications sufficient to found a ne^v claim 
on. 

Silverman v. Hendrickson, 1902 C. D. 123, 99 0. G. 446. 
If to make the device operative requires a radical change 
in the construction shown and in the description thereof, such 
change can not be made. If the device is operative, though 
not to the degree of perfection desirable, it can not be changed 
to a preferable form. 

Clay, 1901 C. D. 256, 97 0. G. 2980. 
Where a connection between parts was suggested in the 
specification, but none shown in the drawing, a form of con- 
nection may be shown but he must file a proper supplemental 
oath. 

Wareham, 1901 C. D. 204, 97 0. G. 1600. 
May change form of claim (from one statutory class to 
another) by consent of Examiner before appeal or on recom- 
mendation of Board after appeal. 

Travette, 1901 C. D. 170, 97 0. G. 1176. 
If an amendment is presented which in the opinion of the 
Examiner involves new matter, he should enter the same and 
then reject the claims so presented for want of identity with 
the oris:inal invention. 

Keith, 1901 C. D. 155, 97 0. G. 551. 



303 AMENDMENTS TO CORRESPOND. RuIg 70 

If to make the device operative requires a radical change 
in the construction shown and in the description thereof, such 
change can not be made if the device is operative, though not 
to the degree of perfection desirable, it can not be changed to 
a preferable form. 

Clay, 1901 C. D. 256, 97 0. G. 298. 

Tf the omission of a part changes the mode of operation the 
amendment is within the prohibition of this rule. 
Cook, 1900 C. D. 19, 95 0. G. 585. 

An illustration which amounts to no more than a suggestion 
is not sufficient warrant for a claim filed nearly two years 
after the application and nine days after an interfering patent. 
Dewey v. Colby, 1896 C. D.^12, 75 0. G. 1360. 

A drawing may not be amended to correspond with a model 
not a part of the record of the case. 

Austin, 1891 C. D. 127, 67 0. G. 1059. 

If the idea of constructing an apparatus without the flush- 
ing chamber had occurred to B, he would have set forth such 
construction in one of the figures of the drawing, because the 
omission of the flushing chamber would have promoted both 
cheapness and simplicity. 

Huber v. X. 0. Xelson Mfg. Co., 63 0. G. 311. 

The question raised upon an amendment sought to be intro- 
duced into a pending application is not whether the appli-' 
cant's invention of its subject matter dates back to the filing 
of his original application, but whether such subject matter 
is itself new so far as it relates to said pending application. 
Burson, 1892 C. D. 53, 58 0. G. 1414. 

Where a proposed amendment embodied a substitute claim 
and descriptive matter relation to the subject matter of such 
claims, the amendment should be entered, and if, in the 
opinion of the Examiner, it included matter not disclosed by 
the application as originally filed the claim should be rejected. 
Harvey, 1892 C. D. 47, 58 0. G. 1257. 

Where an application as filed discloses an apparatus and 
also a patentable process and the relation between them is 
such that they could be joined in one application, and the 
apparatus only is embraced in the statement of invention, and 
claims as originally presented, claims for the process may be 
subsequently incorporated, if seasonably presented and sup- 
ported bv a supplemental oath. 

Perkins, 1891 C. D. 63, 55 0. G. 139. 

Amendments can not be made to correspond with a model 
that was never filed in the case. 

Eissner, 1890 C. D. 164, 53 0. G. 919. 



Rule 71 INACCUEACIES OB PROLIXITY. 304 

The -unauthorized addition of new figures to the drawings 
is a violation of the rules. 

Burt, 1889 C. D. 251, 49 0. G. 1986. 
Cases passing on the subject matter of this rule : 

Eolin V. Slingluff, 182 0. G. 975; Kilbourn v. Hirner, 
128 0. G. 1689; Ernest, 1896 C. D. 33, 76 0. G. 1417; 
Eobinson, 1902 C. D. 433, 101 0. G. 2080; Dilg, 1904 
C. D. 463, 113 0. G. 547 ; Grinnell v. Buel, 1899 C. D. 
235, 89 0. G. 1863; Hulett v. Long, 1899 C. D. 446, 
89 0. G. 1141; Snyder, Ex parte, 1882 C. D. 22, 22 0. 
G. 1975; Nicholin & Ochsenreiter, 1891 C. D. 155, 56 
0. G. 1565; Smith, 1892 C. D. 70, 58 0. G. 184. 
See Luberger v. Dodge, 1905 C. D. 603, 114 0. G. 2382. 

Rule 71. Inaccuracies or Prolixity. 

The specification and drawing must be amended 
and revised when required, to correct inaccuracies of 
description or unnecessary prolixity, and to secure 
correspondence between the claim, the specification, 
and the drawing. But no change in the drawing may 
be made except by written permission of the office 
and after a photographic copy of the drawing as orig- 
inally presented has been filed. 

HISTORY. 

Eule 39 of 1869 reads: "The specification, especially if the 
claim be amended, will be subject to examination and revision 
by the Examiner, for the purpose of correcting inaccuracies 
of language or unnecessary prolixity, and of securing cor- 
respondence between the description of the invention and the 
claim." 

Eule 36 of 1870 reads : "The specification, especially if the 
claim be amended, must be amended and revised, if required 
by the Examiner, for the purpose of correcting inaccuracies 
of language or unnecessary prolixity, and of securing cor- 
respondence between the description of the invention and the 
claim." 

"Mere errors of orthography or of grammatical construction 
will be corrected by the Examiner in charge" was added to 
the rule in 1871, and in 1873 the words "statement and" 
inserted after "between the" and before "description." 
■ Eule 70 of 1879 reads: "The specification must be amended 



305 sPECiFiCATioisr. Rule 72 

and revised, when required, for the purpose of correcting in- 
accuracies of description or unnecessary prolixity, and of 
securing correspondence between the claim and the other parts 
of the specification." 

In 1888 the words "and drawing" were inserted after "spe- 
cification" in the first line, and "the claim, the specification 
and the drawing" substituted for "other parts of the specifica- 
tion." The present rule in the revision of June 18, 1897. 

Rule 72. Specification not to be Returned. 

After the completion of the application the office 
will not return the specification for any purpose what- 
ever. If applicants have not preserved copies of the 
papers which they wish to amend, the office will fur- 
nish them on the usual terms. 

The drawing may be withdrawn only for such cor- 
rections as can not be made by the office ; but a draw- 
ing can not be withdrawn unless a photographic copy 
has been filed and accepted by the examiner as a part 
of the application. Permissible changes in the con- 
struction shown in any drawing may be made only by 
the office and after an approved photographic copy 
has been filed. Sketches filed to show proposed 
changes in construction must be in permanent ink. 
(Amendment of April 17, 1919.) Substitute drawings 
will not be admitted in any case unless required by 
the office. 

HISTORY. 

Eule 40 of 1869 reads : "The Office will not return specifi- 
cations for amendment; and in no case will any person be 
allowed to take any papers, drawings, models, or samples from 
the Office. If applicants have not preserved copies of such 
papers as they wish to amend, the Office will furnish them 
on the usual terms." 

The sentence between the semicolon and period does not 
appear in the rule in 1878. 

In 1879, Rule 71 read: "After the completion of the appli- 
cation the Office will not return the specification for any pur- 
pose whatever. The model or drawing (but not both at the 



Kule 72 sPEciFicATioisr. 306 

same time), may be withdrawn for correction. If applicants 
have not preserved copies of snch papers as they wish to 
amend, the Office will furnish them on the usual terms." 

In 1883 there is a footnote which reads : "Note — Drawings 
will in no instance be returned to an applicant or his au- 
thorized agent unless a model has been filed and accepted by 
the Examiner as a part of the application." 

In 1888, Eule 72 read: "After the completion of the ap- 
plication the Office will not return the specification for any 
purpose whatever. If applicants have not preserved copies of 
the papers which they wish to amend, the Office will furnish 
them on the usual terms. 

"The model or drawing, but not both at the same time, may 
be withdrawn for correction. But a drawing can not be with- 
drawn unless a model has been filed and accepted by the 
Examiner as a part of the application." 

The words "or photograph copy of the drawing" added 
1907. Present rule 1908. 

CONSTRUCTIONS. 

A substitute drawing refused admission where it appeared 
that the original could be corrected to embody all that was 
sought to be introduced into the substitute. 
Conner and Pearson, 193 0. G. 753. 
The rules and practice of the Patent Ofiice do not permit 
the return of a complete application or the transfer of parts 
thereof to a new and different application, 
Giles, 190 0. G. 547. 
A photographic copy of the original drawing should be 
filed where a change is made in any of the original sheets, 
whether by amendment of a figure or addition of a new figure. 
Campbell, 1905 C. D. 196, 116 0. G. 1453. 
A photographic copy of the drawing must be filed before 
altering the signature thereon. 
Hanson, 114 0. G. 2381. 
The applicant should file a blue print of the original draw- 
ing and indicate either on this print or by means of a sketch 
the change on the original drawing which it is desired to 
make. The blue print and sketch should then be filed, accom- 
panied by a written request for permission to alter the draw- 
ing. 

Zwiebel, 1904 C. D. 198, 110 0. G. 1428. 
"It is the settled practice of the Patent Office to refuse to 
return any of the papers of a complete application, that is, an 



307 AMENDMENTS TO BE SPECIFIC. RuIg 73 

application which comprises all necessary papers properly 
executed and on which the filing fee has been paid. 

Applications which do not comprise all papers necessary to 
a complete application properly ' executed may be returned 
where their return is necessary in order to enable the appli- 
cant to complete the papers, and this may be done whether 
the filing fee has been paid or not." 

Van Etten, 1897 C. D. 68, 80 0. G. 1760. 

Doubtful if any papers that have been received and stamped 
may be returned. If so, stamp should be erased. 
Van- Etten, 1897 C. D. 68, 80 0. G. 1760. 

Rule 73. Amendments must be Specific. 

In every amendment the exact word or words to be 
stricken out or inserted in the application must be 
specified and the precise point indicated where the 
erasure or insertion is to be made. All such amend- 
ments must be on sheets of paper separate from the 
papers previously filed, and written on but one side 
of the paper. Erasures, additions, insertions, or 
mutilations of the papers and records must not be 
made by the applicant. 

Amendments and papers requiring the signature of 
the applicant must also, in case of assignment of an 
undivided part of the invention, be signed by the as- 
signee. (Eules 6, 107.) 

HISTORY. 

In 1869, Eule 35 read in part as follows: "And all amend- 
ments of specifications or claims must be made on separate 
sheets of paper from the original, and must be filed in the 
manner above directed. Even when the amendment consists 
in striking out a portion of the specification, or other paper, 
the same course should be observed. ISTo erasure must be 
made. The papers must remain forever as they were when 
filed, so that a true history of all that has been done in the 
case may be gathered from them." 

In 1870 "by the applicant" was inserted after "erasure" 
and the following matter added to the rule : 

"In every case of amendment the exact word or words to be 



Eule 75 PATENT SHOWING INVENTION. 308 

stricken out or inserted should be clearly specified, and the 
precise point indicated where any insertion is to be made." 

The present rule in 1888, except that instead of "addi- 
tions, insertions, or" in the last sentence of the first paragraph 
there was the word "and." 

Rule 74. Specification Rewritten. 

Wlien an amendatory clause is amended it must be 
wholly rewritten, so that no interlineation, or erasure 
shall appear in the clause as finally amended, when 
the application is passed to issue. If the number or 
nature of the amendments shall render it otherwise 
difficult to consider the case, or to arrange the papers 
for printing or copying, the examiner may require 
the entire specification to be rewritten. 

HISTORY. 

This is Eule 73 of 1879. 

CONSTRUCTION'S. 

The specification may not be arbitrarily rewritten by an 
applicant. 

Hilliker, 183 0. G. 1035; see Oreweiler, 170 0. G. 1067; 
Ilenrick, 191 0. G. 1067. 
A substitute specification will not be admitted unless re- 
• quested by the Office. 

Orewiler, 170 0. G. 4-81. 
Neglect of the requirement of this rule held net to cause 
abandonment. 

Gaylord, 117 0. G. 2366. 
If it is desired to restore a claim previously canceled, the 
claim must be rewritten, it is not sufficient to refer to it as 
"the original language.'' 

Mumler, 1883 C. D. 62, 24 0. G. 1090. 
Case which passes on the subject matter of this rule. 
Gaily, 1903 C. D. 480, 107 0. G. 1661. 

Rule 75. Patents Showing but not Claiming Invention. 

When an original or reissue application is rejected 
on reference to an expired or unexpired domestic 



309 PATENT SHOWING INVENTION. Rule 75 

patent which substantially shows or describes but does 
not claim the rejected invention, or on reference to a 
foreign patent or to a printed publication, and the 
applicant shall make oath to facts showing a comple- 
tion of the invention in this country before the filing 
of the application on which the domestic patent issued, 
or before the date of the foreign patent, or before the 
date of the printed publication, and shall also make 
oath that he does not know and does not believe that 
the invention has been in public use or on sale in this 
country, or patented or described in a printed pub- 
lication in this or any foreign country for more than 
two years prior to his application, and that he has 
never abandoned the invention, then the patent or 
publication cited shall not bar the grant of a patent 
to the applicant, unless the date of such patent or 
printed publication be more than two years prior to 
the date on which application was filed in this country. 

HISTORY. 

Substantially this rule introduced, as Rule 74, in 1879. The 
concluding clause, "except upon interference as provided in 
Eule 94," of the 1879 rule was omitted in 1886, "in this 
country" was inserted after "completion of the invention" in 
1888 and the wording "before the filing of the application for 
the domestic patent" was changed to "before the filing of the 
application upon which the domestic patent issued." 

The wording of the present rule appears in 1899, 

Oath to be submitted to Law Examiner Order 2,255, 227 
0. G. 1. 

Since May 18, 1916, oaths forming part of applications for 
reissue, and affidavits filed under the provisions of Rule 75 
for the purpose of carrying the applicant's date of invention 
back of a cited reference, have been referred to and passed 
upon by a law examiner. 

As to the affidavits under Rule 75, it became clear at once 
from the character of tlie affidavits submitted and the argu- 
ments presented by counsel that the practice under this rule 
had been very different in the various divisions of the Office. 
The essentials of affidavits under Rule 75 are set forth in a 



Rule 75 PATENT SHOWING INVENTION. 310 

harmonious line of Commissioner's decisions reaching back 35 
years (Ex parte Gasser, 1880; Ex parte Saunders, 1883; Ex 
parte Donovan, 1890; Ex parte McElroy, 1909). In passing 
upon the affidavits referred under this order it has been the 
purpose to enforce the rulings in these decisions as to essen- 
tial requirements, but with an eye to the substance of the 
matter rather than a strict adherence to form or manner of 
statement. 

Commissioner Eeport, 1916. 

CONSTRUCTIONS. 

Discussion of rule. 

Thomas, 251 0. G. 850. 
The acquiescence of an applicant in a rejection on refer- 
ences precludes him from carrying his date of invention back 
of such references in a suit. 

Milber v. School District of Pitsburg, 243 F. E. 196. 
A verv. full discussion of this rule by Com. Newtoni Thomas, 
251 0. G. 850.) 

As to showing diligence. Question raised but not decided 
on petition. The question is appealable to the Board. 
Hamby, 182 0. G. 511. 
If applicant relies upon a foreign application he must fur- 
nish a copy of the original application certified to by the 
country in which it was filed. 
Burlnels, 179 0. G. 574. 
Affidavits should so describe the device relied upon to show 
the completion of the invention, either verbally or by sketches, 
that the Office can of itself determine whether the device so 
constructed constitutes the completion of the invention at the 
date upon which it is alleged to have been made. 
Romunder, 157 0. G. 209. 
Affidavits under Rule 75 will not be accepted after the 
claims have been finally rejected in the absence of good and 
sufficient showing duly verified why such affidavits were not 
earlier presented. (Berg, 120 0. G. 903.) 
Romunder, 157 0. G. 209. 
Apparently an affidavit under this rule should contain a 
showing of diligence in completing the invention. 
McElray, 140 0. G. 1207. 
It is the practice of the Office to accept testimony taken in 
an interference in lieu of an affidavit (Homan, 117 0. G. 
2088). But an excerpt of the interference testimony relied 
upon, should apparently be filed. 
Newman, 135 0. G. 1122. 



311 . PATENT SHOWING INVENTION. Rule 75 

Copy of affidavit refused a party to an interference. 

U. S. Standard Voting Machine Co., 130 0. G. 1486. 
A party in an interference proceeding is not entitled to 
see affidavits filed under this rule. 

Davis V. Garrett, 1906 C. D. 724, 123 0. G. 1991. 
After a claim has been finally rejected on several references 
an antedating affidavit under Eule 75 tending to overcome one 
of the references can not be admitted. 

Berg, 1905 C. D. 36, 120 0. G. 903. 
A question of whether ones own patent may be avoided as a 
reference by affidavits under this rule is appealable to the 
Examiners-in-Chief. 

Marsteller, 1905 C. D. 431, 118 0. G. 2250. 
Where an interference is declared, it is the practice of the 
Office to seal up affidavits filed under Eule 75 during the 
ex parte prosecution of a case. 

Kinsman v. Kintuer, 1905 C. D. 363, 118 0. G. 837. 
If applicant specifically points out what portion of the evi- 
dence in an interference proceeding he wants considered this 
may be used in lieu of an affidavit under this rule. The 
•decision in the interference need only be followed when the 
decision indicates a finding that the applicant is not entitled 
to an earlier date of invention than those found. 
Homan, 1905 C. D. 288, 117 0. G. 2088. 
The question of the sufficiency of affidavit is appealable to 
the Examiners-in-Chief. 

Xordstrom, 1905 C. D. 114, 115 0. G. 1327. 
A preliminary statement held equivalent to an affidavit 
under this rule. (See notes to Eule 110.) 

Forsyth v. Eichards, 1905 C. D. 115, 115 0. G. 1327. 
The Primary Examiner rejected the claims on several pat- 
ents cited as references, the Examiners-in-Chief overruled the 
Primary Examiner as to all the references except one, a peti- 
tion to reopen the case before the Primary Examiner to per- 
mit the filing of an affidavit imder this rule granted. 
Parrish, 1905 C. D. 113, 115 0. G. 1327. 
One can not overcome a patent granted to himself in this 
wav. 

Hallowell, 1903 C. D. 268, 105 0. G. 1533. 
Eule 75 says that when the inventor makes the affidavit no 
further proof is necessary. (Johnson, 89 0. G. 1341.) In 
the absence of such affidavit the question of the amount of 
proof which will be regarded as sufficient is a matter for the 
judgment of the tribunal having jurisdiction of the question." 



Rule 75 PATENT SHOWING INVENTION. 312 

Where the affidavit of the inventor can not be obtained, the 
affidavit of the assignee or other party may be received. 
Foster, 1903 C. D. 123, 105 0. G. 261. 
These affidavits are not open to inspection either by the 
public or by parties in interference. Before the files are 
exhibited to parties to an interference the affidavit must be 
either removed or sealed up. 

Gasser, 1880 C. D. 94, 17 0. G. 507; Davis v. Ocum- 
paugh V. Garrett, 1903 C. D. 130, 103 0. G. 1679. 
Eule 75 is not inconsistent with law. The affidavit presented 
referring to inventions abroad are incompetent to show in- 
vention in this country prior to the date of the references. 
Grosselin, 1901 C. D. 248, 97 0. G. 2980. 
Tf there is a patent and an application the patent contain- 
ing claims which interfere, the affidavit under Eule 75 may 
be postponed until after the interference. 
Sorrle, 1900 C. D. 42, 90 0. G. 2133. 
An affidavit under this rule disclosing the contents of a 
caveat in part may be placed in the confidential archives on 
request. 

Lowry, 1900 C. D. 1, 90 0. G. 445. 
An affidavit required if a patent be issued upon one of two 
applications pending at the same time, upon the prior appli- 
cation, the patent containing no claim to the invention. 
Sorrle, 1900 C. D. 42, 90 0. G. 2133. 
If, however, the Examiner believes that the applicant's affi- 
davit is fraudulent and so charges, the applicant would be 
given leave to file corroborative affidavits. 

Hurlbut, 1890 C. D. 135, 52 0. G. 1062; Johnson, 1899 
C. D. 212, 89 0. G. 1341. 
The affidavit of others than the applicant can not be re- 
quired. 

Hurlbut, 1890 C. D. 135, 52 0. G. 1063; Johnson, 1899 
C. D. 212, 89 0. G. 1341. 
Sufficiency appealable to Examiners-in-Chief, cumulative evi- 
dence required appealable to Commissioner, also as to pro- 
ducing original drawing or structure. Latter requirement is 
within the discretion of the Examiner. 

Ex parte Johnson, 1899 C. D. 212, 89 0. G. 1341. 
Sufficiency of affidavit not appealable to Commissioner. 

Schmirtz v. Appert, 1896 C. D. 95, 77 0. G. 1784. 
Affidavit construed with a subsequent preliminary statement. 

Schmirtz v. Appert, 1896 C. D. 95, 77 0. G. 1784. 
What the affidavit should contain. An example of a too 
liberal construction of the lansruage. 

Schmirtz v. Appert, 1896 C. D. 95, 77 0. G. 1784. 



313 PATENT SHOWING INVENTION. Rule 75 

A deposition taken in an interference proceeding admitted 
as an affidavit under this rule. 

Keller, 1892 C. D. 238, 61 0. G. 1790. 
"The rule says that the inventor's affidavit will be sufficient; 
but it does not say that the fact may not be established in 
some other way. For instance, if the testimony taken in an 
interference proceeding showed invention by the applicant 
before the patentee's date it is very clear that there is no 
necessity for the affidavit provided for in Kule 75. 
Keller, 1892 C. D. 238, 61 0. G. 1790. 
If the applicant rests his claim of invention upon drawings 
or devices made by him, he should produce such drawings or 
machines or furnish copies or representations of the same, in 
order that the Office may judge whether he in fact made the 
invention claimed in his application. 

Saunders, 1883 C. D. 23, 23 0. G. 1224; Donovan, 1896 
C. D. 109, 52 0. G. 309; Hansen v. Davis, 1891 C. D. 
72, 55 0. G. 998; Hurlbut, 1890 C. D. 135, 52 0. G. 
1062. 
Where it was alleged that a drawing was made and dis- 
closed to others previous to a certain date, held that the draw- 
ing should be filed but that the affidavits of such other per- 
sons need not be furnished. 

Hurlbut, 1890 C. D. 135, 52 0. G. 1062. 
ISTo affidavit required where application was in the Office 
previous to that on which the patent was granted. 
Bonna, 1890 C. D. 126, 52 0. G. 751. 
The mere statement that he disclosed the invention is of 
no avail, either to constitute evidence of disclosure or to im- 
part sufficiency to a statement of facts in themselves inade- 
quate. What facts should be stated. 

Donovan, 1890 C. D. 109, 52 0. G. 309. 
An insufficient affidavit. Did not state facts. 

Boyer, 1889 C. D. 249, 49 0. G. 1985. 
This interpretation of Eule 75 by Mr.^ Commissioner Paine 
(1879) is doubly valuable from the fact that the rule was 
made by him, and it is therefore to be presumed that he was 
fullv advised as to its scope. 

^ Hunter, 1889 C. D. 220, 49 0. G. 1043. 
Where a patent had been issued to joint inventors and more 
than two years of public use had occurred before the filing of 
a separate application by one of the joint inventors, and the 
applicant in the joint application claimed to be the sole in- 
ventor of the device claimed in the joint patent, held that the 



Rule 76 APPLICATION EEJECTED. 314 

said public use was a bar to his obtaining a patent on his 
sole application. 

MacLay, 1889 C. D. 220, 49 0. G. 1043. 
Where an affidavit filed under Eule 75 showed that the 
applicant had conception of the invention prior to the dates 
of the references, but there was no complete reduction to 
practice until after said date, and also stated that he had 
"used every diligence possible in putting the invention into 
use'' without setting forth facts tending to show such dili- 
gence. Held not to be a sufficient compliance with the rule. 
Hunter, 1889 C. D. 218, 49 0. G. 733. 
The applicant must state on oath facts showing either that 
a reduction to practice had been before the filing of the appli- 
cation on which the patent was granted, or that the invention 
had been conceived before that time and by due diligence con- 
nected with a subsequent redu(3tion to practice. 

The mere statement that the invention was made by appli- 
cant before that time is not sufficient and as that may be a 
matter of opinion. 

Gasser, 1880 C. D. 94, 17 0. G. 507; Lanfrey, 1881 C. 
D..39, 20 0. G. 892; Saunders, 1883 C. D. 23, 23 0. 
G. 1224. 
These affidavits are not open to inspection either by the 
public or by parties in interference. 

Gasser, 1880 C. D. 94, 17 0. G. 507. 
Cases which pass on the subject matter of this rule. 

Eddleblute, 1890 C. D. 124, 52 0. G. 124 ; Tournier, 1901 

C. D. 306, 94 0. G. 2166; Byron v. Maxwell, 1903 C. 

D. 230, 105 0. G. 499 ; Card & Card, 1904 C. D. 383, 
112 0. G. 499; McNeil, 1901 C. D. 313, 10 0. G. 
1976; Annand v. Spalekhaver, 1901 C. D. 234, 97 0. 
G. 2741 ; Martin v. Goodrum v. Dyson v. Gully and 
Goodrum, 130 0. G. 1485. 

Rule 76. Application Rejected on References Showing 
but not Claiming Invention, etc. 

When an application is rejected on reference to an 
expired or unexpired domestic patent which shows or 
describes but does not claim the invention, or on ref- 
erence to a foreign patent, or to a printed publica- 
tion, or to facts within the personal knowledge of an 
employee of the office, set forth in an affidavit (when 



315 APPLICATION REJECTED. Rule 76 

requested) of such employee (Rule 66), or when re- 
jected on the ground of public use or sale, or upon 
a mode or capability of operation attributed to a ref- 
erence or because the alleged invention is held to be 
inoperative or frivolous or injurious to public health 
or morals, affidavits or depositions supporting or 
traversing these references or objections may be re- 
ceived, but affidavits will not be received in other 
cases without special permission of the Commissioner. 
(See Rule 138.) 

HISTORY. 

The last sentence of Eule 31 of 1873 reads: "Affidavits in 
support of applications will not be received at any stage of 
the examination, unless the Office denies that the device is 
operative." 

In 1878 the words "or useful" were added. 

The present rule was introduced in 1879, except in Eule 75 
of that date, which rule is now 76, a request for the Exam- 
iner's affidavit was not required and there was not reference 
to "Rule 86," which provided for affidavits of emplo.yees of 
the Office and others traversing or confirming the applicant's 
affidavit in reissue cases. The parenthetical clause (when re- 
quested) and reference to Rules && and 140 (now QQ and 141) 
appear in 1888. 

See paper read by Elonzo T. Morgan, Sept. 21, 1916, before 
the Examining Corp of F. S. Patent Office, entitled. Estab- 
lishing Xovelty by Affidavits. 

CONSTRUCTIONS. 

The Court of Appeals refused to review the decision of the 
Commissioner because there were no affidavits tending to estab- 
lish patentabilitv. 

In re Merrill, 199 0. G. 619. 
Affidavit should set forth facts other than appear on the 
face of the document discussed. 
Chapman, 198 0. G. 237. 
1^0 evidence was taken nor were affidavits called for in the 
Patent Office. The statement of appellant in his application 
must be accepted as true. 

Harbeck, 191 0. G. 586. 
Had applicant so desired he could have filed rebutting affi- 



Rule 76 APPLICATION rejected. 316 

davits under Eule 76 and the court would then have had the 
benefit of those affidavits and the comments thereon by the 
Patent Office tribunals. 

In re Gold, 180 0. G. 606. 
Affidavits as to public use only effective when there is doubt. 

McElray, 161 0. G. 753. 
In the present case there is no doubt that the appellant's 
font of type is ornamental in appearance, and the fact that it 
has gone into very extensive use, as shown by affidavits of 
record in this case, confirms in my mind the artistic value 
of the design. 

Smith, 130 0. G. 1688. 
"In addition there were affidavits showing the large sale of 
the patent in suit, and tending to show that no prior weeder 
had been a success." 

Cooperating Merchants' Co. v. Hallock, 128 F. E. 596- 
598. 
Affidavits explaining a mistake in an amendment considered 
where the question related to abandonment. 
Eichards, 1906 C. D. 321, 124 0. G. 627. 
Affidavits and arguments presented as to operativeness. 
Duryea & White v. Eice, Jr., 1906 C. D. 172, 122 0. G. 
1395. 
Affidavits going to show the practical success of the appli- 
cant's device where the truth thereof is substantially conceded 
are entitled to material weight in view of the fact that the 
grant of a patent confers no absolute right of property and 
in view of the customary rule of resolving ordinary doubts in 
favor of applicant. 

Thompson, 1906 C. D. 566, 120 0. G. 2756. 
The Examiner is not bound to accept tlie conclusion of 
affidavits filed to overcome a rejection on the ground of in- 
operativeness, nor is he compelled to cite references and 
authorities. 

Davidson, 1905 C. D. 81, 120 0. G. 2753. 
When the party fails to make his demonstration and to 
submit his evidence in response to the original rejection be- 
fore prosecuting his case to final rejection the case will not be 
thereafter reopened except upon showing of good and sufficient 
reasons why the evidence whose admission is sought was not 
earlier presented. 

Eichmond, 1905 C. D. 41, 120 0. G. 905. 
The affidavit of a party that his device was operative ques- 
tionable in view of the fact that others were available and 
were not called. (Interference.) 

Kelly V. Flynn, 1900 C. D. 339, 92 0. G. 1237. 



317 APPLICATION EEJECTED. Eule 76 

Although met by the same substantial objection from the 
beginning the applicant made no effort to enlighten her con- 
tention through the aid of experts in the art. 

In the absence of such enlightenment there arises in our 
own minds nothing beyond a mere conjecture that the ap- 
pellant's claim may have attained the dignity of invention. 
Beswick v. Com., 1900 C. D. 294, 91 0. G. 1436. 
Decisions under old rules not thought to be applicable to 
the present rule. 

Stone V. Greaves, 1880 C. D. 70, 83 0. G. 1805; Anson 
V. Woodburv, 1877 C. D. 49 and 1877 C. D. 4, 12 0. 
G. 1 ; Hedges v. Daniels, 1880 C. D. 64, 17 0. G. 394. 
The affidavits filed at the hearing from different manufac- 
turers giving their opinions and experiences in regard to the 
novelty of the invention and its utility, as well as its exten- 
sive adoption by the trade, have been carefully considered. It 
is true that where the patentability of a device is not clear 
extensive sales may resolve the doubt. This is, however, an 
unsafe criterion (authorities cited). 

Flomerfelt, 1896 C. D. 59, 76 0. G. 2007. 
The affidavits referred to include not only the special affi- 
davits provided for by Eule 75, but all other affidavits sup- 
porting or traversing references or objections. 
Grosselin, 1896 C. D. 39, 76 0. G. 1573. 
The Examiner's action in holding that no testimony as to 
the operativeness of an invention would be sufficient to war- 
rant the withdrawal of the objection to the granting of a 
patent unless confirmed by a personal inspection of the Ex- 
aminer or his deputized assistant, not warranted by the rules. 
Munn & Co., 1893 C. D. 48, 63 0. G. 153. 
Pending applications not effected by others in interference. 

Woodward, 1892 C. D. 62, 58 0. G. 1554. 
Affidavits of mechanics tending to show that the description 
in an Eng. Prov. Sepc. was insufficient to enable one to make 
the device received, but the practice of filing such affidavits 
disapproved. 

Taylor & Banks, 1872 C. D. 239, 2 0. G. 519; Webstei 
V. Sanford, 1888 C. D. 92, 44 0. G. 567. 
A special order made by the Commissioner and approved by 
the Secretary of the Interior permitting the filing of affidavits 
to prove that a mixture operated more effectually or rapidly 
and was more convenient in use than any of the substances 
of which it was compounded. 

Rodgers, 1879 C. D. 333, 16 0. G. 1233. 



Rule 77 ABANDONMENT. 318 

The rules now in force contain no provision for counter- 
affidavits on the question of the operativeness of these devices. 
Such affidavits can not therefore be received in this case. 
Fuller V. Brush, 1879 C. D. 338, 16 0. G. 1188. 
As to relative utility in respect to reference cited, as a 
claim to patentability. 

Moslcy, 1870 C. D. 53. 
Affidavits which assert a decided superiority of operation 
over the devices cited certainly make a prima facie case of 
superior utility for applicant's device, and a decided difEerence 
in utility may well import a difference in principle. 
Tuttle, 1870 C. D. 3. 
Cases which pass on the subject matter of this rule: 

Davis V. Ocumpaugh v. Garrett, 1903 C. D. 130, 103 0. 
G. 1679; Dickinson v. Thibodeau v. Plildreth, 1902 C. 
D. 202, 99 0. G. 2550. 

Rule 77. Abandonment. 

If an applicant neglect to prosecute his application 
for one year after the date when the last official notice 
of any action by the office was mailed to him, the ap- 
plication will be held to be abandoned, as set forth 
in Rule 171. 

Suspensions will only be granted for good and suffi- 
cient cause, and for a reasonable time specified. Only 
one suspension may be granted by the primary ex- 
aminer; any further suspension must be approved by 
the Commissioner. 

Whenever action upon an application is suspended 
upon request of an applicant, and whenever an appli- 
cant has been called upon to put his application in 
condition for interference, the period of one year run- 
ning against the application shall be considered as 
beginning at the date of the last official action preced- 
ing such actions. 

Whenever, during a time when the United States is 
at war, publication of an invention by the granting 
of a patent might in the opinion of the Commissioner 



319 ABANDONMENT. EuIg 77 

be detrimental to the public safety or defense or might 
assist the enemy or endanger the successful prosecu- 
tion of the war, he may suspend action on the appli- 
cation therefor. 
As amended in July, 1914, see 239 0. G. 945. 

Eev. Stat., sec. 4894. 

HISTORY. 

As to first paragraph see Eule 171. 

Second paragraph, in 1888, read: "Whenever action upon 
an apph'eation is suspended upon request of an applicant, the 
period of two years running against such application shall be 
considered as beginning at the date of the last official action 
preceding such request. 

Next to last paragraph added 1892. 
■ Last paragraph added 1899. 

The following paragraph added in 239 0. G. 945 : 

Wlienever, at any time when tlie United States is at war, 
publication by the granting of a patent might, in the opinion 
of the Commissioner, be detrimental to the public safety or 
defense, or might assist the enemy or endanger the successful 
prosecution of the war, he may suspend the action on the 
application therefor. 

CONSTRUCTIONS.- 

See notes to Rules 65, Q6, 68. 69 and 171. 
Any application pending more than five years to be re- 
ported to the Commissioner. 

Order 2,107, 200 0. G. 1119; Order 2,095, 199 0. G. 1. 
If an applicant is referred to this rule he should examine it. 

Vesey, 195 0. G. 213. 
Affidavit under Eulc 75 filed and held insufficient and a 
new reference cited, argument as to sufficiency of affidavit. 
Final rejection premature. 
Har^by, 183 0. G. 1031. 
That claims under Rule 96 were not suggested is no excuse 
for failure to amend. 

McRie, 130 0. G. 980. 
That a case was inadvertently crossed off the attorney's 
docket not sufficient excuse where it appears that delay until 
near the close of the period was intended. 
Duryea, 128 0. G. 1291. 
A person has a perfect right to delay action until near the 



Rule 78 AMENDMENT AFTER NOTICE. 320 

end of the year but in so doing he risks a delay due to a 
mistake. 

Grant, 138 0. G. 885. 
Where the Examiner suspends action upon a case and fixes 
a definite period, as required by the rule, he should take the 
case up for action at the expiration of the time. 

Herzog v. Wheeler, 1905 C. D. 216, 116 0. G. 2009. 
Where after amendment of a case the Examiner writes sus- 
pending action to permit the applicant to file another amend- 
ment agreed upon at an oral interview and no further action 
is in the case for more than two years. Held that the case 
is abandoned, notwithstanding the fact that the Examiner 
made his suspension for the definite period of thirty days. 
Herzog v. Wheeler, 1905 C. D. 216, 116 0. G. 2009; 
Hunter, 1905 C. D. 199, 116 0. G. 1731. 
The petition is not only objectionable in asking an indefinite 
suspension but requests suspension beyond the year in which 
action must be taken as required by statute. In such cases the 
Commissioner has no authority to grant the petition and it is 
therefore denied. 

Whitney, 1904 C. D. 139, 109 0. G. 2442. 
The Commissioner has no power during the time limited to 
grant an extension beyond the limit. 

Bauercamper, 1902 C. D. 130, 99 0. G. 448. 
The above case was where the Examiner held that the claims 
were identical with those of another application by the same 
applicant, which was involved in interference. The applicant 
has a right to appeal from such a ruling. 

Ostergen v. Tripler, 1901 C. D. 350, 95 0. G. 838. 
It is contrary to the well settled policy of the Office to sus- 
pend action on any application pending before it unless such 
suspension is absolutely necessary to determine the right of 
the applicant to a patent on that application. 
Bullier, 1899 C. D. 155, 88 0. G. 1162. 

Rule 78. Amendment after Notice of Allowance with- 
out Withdrawal from Issue. 

Amendments after the notice of allowance of an 
application will not be permitted as a matter of right, 
but may be made, if the specification has not been 
printed, on the recommendation of the primary ex- 



321 AMENDMENT AFTER NOTICE. Rule 78 

aminer, approved by the Commissioner, without with- 
drawing tlie case from issue. (See Rule 165.) 

CONSTRUCTIONS. 

The estabhshment of a proper Une of division between this 
case and the other can be effected nnder the provisions of 
Eule 78 without withdrawal from issue. 

• Dyson, 233 0. G. 755. 

The presum23tion is that applicant made as broad claims as 
he was entitled to make and a broadened claim requiring a 
reexamination will not be made under this rule. 
Goldsmith & Whiting, 184 0. G. 553. 

Amendment under this rule not a matter of right and will 
not be permitted when the Examiner reports the claim as not 
allowable. 

Fleming, 126 0. G. 2590; Goldsmith & Wheling, 184 
0. G. 553. 

A specific claim allowed a successful party after interfer- 
ence upon a generic claim. 

Van Yorx, 170 0. G. 243. 

If no sufficient reason why the claim was not previously 
presented is given and the Examiner is of the opinion that 
it is lacking in patentable novelty, its entry will be refused. 
Langhaar, 159 0. G. 747. . 

Eule 78 does not provide for withdrawing cases from issue, 
but for the admission of amendments without withdrawing 
the case from issue. It is the well settled practice that where 
amendments are presented under Eule 78, containing claims 
which the Examiner recommends as patentable, such amend- 
ments will be entered, but that amendments presenting claims 
which the Primary Examiner holds are not patentable will 
not be entered. 

Orndoff, 140 0. G. 100. 

It is not necessary for the Examiner to give in detail his 
reasons for holding that the claims are unpatentable, and the 
rule does not provide for an indirect prosecution of the appli- 
cation. 

Orndoff, 140 0. G. 1001. 

The allowance was one day later than the receipt of the 
amendment, the allowance was therefore irregular. It should 
be withdrawn from issue (even if it should require a division). 
Law, 111 0. G. 1038. 

Where claims are sought to be inserted by amendment un- 
der the provision of Eule 78 in an allowed application it is 



Rule 79 DESIGN PATENTS. 322 

not necessary for the Examiner to state fully and in detail 
his reasons for reaching the conclusion that the claims are not 
patentable, as is necessary in the ordinary examination of a 
case. His action is merely in the nature of advice to the 
Commissioner upon which he can base his action in approving 
or disapproving the entry of the amendment. 
Stone, 1902 C. D. 434, 101 0. G. 2080. 
It is not the practice of the Ojfiice to permit the withdrawal 
of applications from issue for the purpose of further amend- 
ment except as provided by Eule 78. 

Pierce, 1901 C. D. 224, 97 0. G. 2307. 
Second clause. This allows broadening the claims in proper 
cases. 

O'Connor, 1899 C. D. 446, 89 0. G. 1141. 
Only where it is not necessary to reopen the case. 

91 0. G. 1034; Woodward, 91 0. G. 1801. 
Where an applicant has two applications in the Office dis- 
closing different species of the same invention, each containing 
specific claims and one containing a claim broad enough to 
cover both species, and the one containing only specific claims 
has been allowed, a cross-reference disclaiming the subject 
matter of the broad claim may be inserted into the allowed 
case under Rule 78 without withdrawing it from issue. 
Anderson, 1893 C. D. 51, 63 0. G. 463. 
When such amendments affect the merits, they can not be 
made without withdrawing the case from issue upon a proper 
showing. 

Cornelius, 1891 C. D. 124, 56 0. G. 929. 
Amendment after allowance only permitted in cases where 
its refusal would work irreparable injury as to introduce 
claims that could not be patented in a separate application. 
Myers, 1889 C. D. 198, 49 0. G. 131. 
Subject of affidavits considered. 

Steinmetz, 244 0. G. 363. 
Cases which pass on the subject matter of this rule : 

Meacham, 113 0. G. 1417; 94 0. G. 2169. 
See Order No. 1365, 93 0. G. 557. 

DESIGNS. 

Rule 79. Design Patents, to Whom Granted. 

A design patent may be obtained by any person 
who has invented any new, original, and ornamental 



323 DESIGN PATENTS. Rule 79 

design for an article of manufacture, not known or 
used by others in this country before his invention 
thereof, and not patented or described in any printed 
publication in this or any foreign country before his 
invention thereof, or more than two years prior to his 
application, and not caused to be patented by him in 
a foreign country on an application filed more than 
four months before his application in this country, 
and not in public use or on sale in this country for 
more than two years prior to his application, unless 
the same is proved to have been abandoned, upon 
payment of the fees required by law and other due 
proceedings had, the same as in cases of inventions 
or discoveries. 

Rev. Stat., sees. 4929 to 4933. 

See The Law of Patents for Designs, by Wm. L. Symons. 

CONSTRUCTIONS. 

In this case the Circuit Court decided (182 F. 150), that 
a painting, if it possess artistic merit and be suitable, also, 
for use as a design may, at the owner's election, be protected 
either by copyright or by patent. On this broad question we 
express no opinion. 

Louis De Jonge & Co. v. Brenker & Kessler Co., 191 F. 
E. 35. 
The liability of one article being taken for the other. 

Graff, Washbourne & Dunn v. Webster, 189 P. R. 905. 
If the characteristics of the device relate to its mechanical 
function it is not patentable even if this mechanical function 
is to produce an appearance supposed to be beautiful. 
Mygatt, 188 0. G. 1055. 
The plain simplicity and beauty of the defendant's tomb 
is not due to anything found in the second claim of the pat- 
ent. The patent is not for a design. 

Tayntor Granite Co. v. Goelchius, 183 P. R. 130-131. 
AVhere, as in the art of printing, the field of inventive de- 
sign is limited to modifications of details in predetermined 
forms of letter and an inventor has succeeded in producing a 
new font having clearly distinguishing characteristics running 
through the whole and the esthetic value of the production is 



Rule 79 DESIGN PATENTS. 324 

confirmed by an extensive demand for the same, it is believed 
that he should be granted the right to a lawful monopoly of 
the results of his labors for the limited time provided by the 
design statutes. 

Smith, 130 0. G. 1688. 

It is not enough that the design should comprise features 
which would commend it to persons familiar with the art 
because of its functional value; it must possess an inherent 
beauty. 

Bettcndorf, 127 0. G. 848. 

The application of mica flakes to the surface of insulating 
tubes. 

The effect is one of design and can not be rightfully appro- 
priated as a trade-mark any more than can the distinctive 
functioning features of a machine. The latter when new, 
useful and involving invention, are the legitimate subjects of 
mechanical patents. The former when new, ornamental and 
the result of invention are subjects of design paten.ts. 
American Circular Loom Co., 122 0. G. 1725. 

Congress in enacting the patent statutes, relating as well 
to designs as to mechanisms, was not establishing a school of 
the fine arts and did not provide for juries of artists, or 
artistic experts, to pass upon the questions of originality and 
invention. 

Schraubsladter, 120 0. G. 1168. 

Where a font presents peculiarities in some of the letters, 
but these peculiarities do not bear such relation to the font 
as a whole as might distinguish novelty and invention in the 
font, even though such qualities could be predicated upon 
these peculiarities for the individual letters in which they 
appear and the letters display no common or pervading char- 
acteristic which might appeal either to the ordinary observer 
or to the trained expert as new and ornamental. The font 
is not patentable. 

Scott V. Emmet & Hesolett, 116 0. G. 1184. 

To apply to the W. & G. letters the wavy outline of the I 
letters is to provide them with the same effect of ornamenta- 
tion that has been disclosed by I and in the same manner. 
Schmohl, 115 0. G. 505. 

Novelty and invention in designs. 
Schmohl, 115 0. G. 505. 

"The ground of rejection here is not aggregation, but lack 
of invention, by reason of the mere obviousness of the changes 
relied upon to distinguish over prior designs." 
Barnhart, 115 0. G. 247. 



325 DESIGN PATENTS. Rule 79 

"It is to be noted that in designing his lamp the appellant 
has changed the form and arrangement of parts ■ designed to 
perform mechanical functions; but it is also to be noted that 
the changes were made solely for the purpose of obtaining 
tlie new and ornamental aijpearance.'' Held patentable. 
Gray, IM 0. G. 543. 

The doctrine of genus and species does not apply to designs 
and there can be no modification of a design. 

Schraubstadter, 1904 C. D., 110 0. G. 2015. 

Change in form to conserve mechanical function not pat- 
entable as a design. Lack of invention. Movable parts. 
Mckel & Crane, 1903 C. D., 109 0. G. 2441. 

Substantial difference is required to render two several 
devices patentable as designs. The difference between patent- 
able novelties in mechanical matters and patentable novelties 
in matters of design, results from the different nature of the 
two things. Detail is of little consequence in the latter; it 
ma}^ be all important in the former. 
Freeman, 109 0. G. 1339. 

So far as this design possesses any peculiarity of appear- 
ance, due to a configuration created and employed for the 
performance of a mechanical result, that is to say, by which 
it fits the place where it is to be used, such appearance must 
be eliminated from consideration of this subject as an orna- 
mental design. 

Kern, 1903 C. D., 105 0. G. 2061. 

There is, in reference to a design, lack of invention in an 
aggreiration of old parts. 

Hanson, ]903 C. D., 105 0. G. 2058. 

A design may properly be placed upon a device having 
mechanical utility; but the design itself is not founded upon 
such utility. The function of the design is to appeal. to the 
esthetic taste, or to produce "pleasure or admiration in its 
contemplation." 

Hartshorn, 1903 C. D., 104 0. G. 1395. 

It would be a dangerous undertaking for persons trained 
only to the law to constitute themselves final judges of the 
worth of pictorial illustrations. 

Blistein v. Donaldson Lthgph. Co., 102 0. G. 1553. 

Movability of parts: The subject matter of patents must 
be definite and certain, and since designs relate solely to shape 
or configuration the subject matter must be of a fixed and 
definite shape. This is not possible in the case of a machine 
made up of movable parts whose change in position changes 
the appearance of the devices. It is probably because of this 



Rule 79 DESIGN PATENTS. 326 

fact that the design law was limited to articles of manufac- 
ture. 

It has, however, never been the practice of the Office to re- 
quire absolute immovability of the parts of an article. 
Steck, 98 0. G. 239-231. 
Useful : Our 'ideas of beauty are derived to a certain ex- 
tent from our ideas of the fitness of things for the purpose 
for which they were designed, and therefore it is practically 
impossible to disassociate the ideas of beauty from that of 
use in all articles intended for mechanical use. 
Steck, 1902 C. D. 9, 98 0. G. 228. 
Must be an invention. Example of lack of invention. 
Westinghouse Electric and Mfg. Co. v. Triumph Electric 
Co., 90 0. G. 603. 
As to an APPEARANCE of having a certain mechanical 
construction. 

Feder v. Poyet, 89 0. G. 1344. 
A design as a whole should be of unchanging character and 
should, not include movable parts, since the shape or configura- 
tion of a device is varied by varied positions of its elements. 
Smith, 1897 C. D. 170, 81 0. G. 969. 
Where applicant presents two distinct articles of manufac- 
ture, a cradle-supporting frame and a cradle-body, and claims 
them as such, held that the application should, be restricted 
to one or the other of these two designs (cases cited). 
Haggard, 1897 C. D. 47, 80 0. G. 1126. 
A mechanical patent is no bar to a design patent for the 
same thing. 

Lunken, 1896 C. D. 22, 76 0. G. 785. 
The range or scope of a design patent is to be determined 
by the courts and not by the Patent Office. 
Finck, 1892 C. D. 139,' 60 0. G. 157. 
As high a standard of originality is required for design 
patents as for any other class, and such originality goes to 
appearance or ornamentation rather than to utility. 
Williams, Jr., 1892 C. D. 23, 58 0. G. 803. 
Only one design may be protected by one patent. 

Petzold, 1891 C. t). 207, 57 0. G. 1277. 
The practice of allowing two or more forms to be included 
in a single design patent would result in confusion in the 
Office and ought not to be permitted. 

Hess & Hess, 1891 C. D. 142, 56 0. G. 1334. 
A dwelling-house is not a "^manufacture" in the statutory 
sense, and a design for the exterior of a dwelling-house is not 
patentable. 

Lewis, 1891 C. D. 61, 54 0. G. 1890. 



327 DESIGN PATENTS. Rule 79 

statutes first passed in 1842 used the word "useful" in 
connection with "patterns or prints or pictures, to be either 
worked into or worked on, etc." It has since been modified 
to the form here shown. Too much prominence was formerly 
given to the word "useful," the subject of invention so far as 
shape, for or configuration is concerned must be useful in 
the sense that it tends to promote pleasure, refinement, com- 
fort, depending upon the sense of the beautiful. It must be 
useful in the sense that it must not be mischievous, or ob- 
scene in its tendency. 

Schulze-Berge, 1888 C. D. 4, 43 0. G. 293; Parkinson, 
71 C. D. 251. 
A design patent relates to form or configuration and not 
to color or the material used. A patent might be granted 
for a combination of colors or material, but not a design 
patent. The distinction should be observed between design 
and other patents. 

Traitel, 25 0. G. 783. 
A previous mechanical patent is no bar to the grant of a 
patent to the patentee therein for a design shown in such 
patent. 

Palmer, 21 0. G. Ill; Burton v. Greenville, 80 C. D. 
602. 
If the design is new and original and also useful it is 
patentable as a design under the law whether it be or not 
ornamental or beautiful. 

Shoeninger, 1878 C. D. 128, 15 0. G. 384; Bartholomew, 
1869 C. D. 103; Fenno, 1871 C. D. 52; Crane, 1869 
C. D. 7. 
A previous design patent is no bar to the grant of a 
mechanical patent to the same applicant. 

Bartholomew, 1871 C. D. 298; Collender, 1872 C. D. 217. 

A design patent and a mechanical patent would not be 

granted on the same subject matter. But a design patent may 

be granted for the configuration and a mechanical patent for 

the construction. 

Bartholomew, 1871 C. D. 298; Collender, 1872 C. D. 217. 
There can be but little doubt that in the enumeration of 
subjects for design patents as contained in the statute, regard 
was had to the external ornamentation of articles of manu- 
facture; and that to this end it was the intent of the law that 
the various designs should be so affixed to the manufactured 
articles or so wrought into their texture as to become in 



Rule 80 TEEMS OF DESIGlSr PATENTS. 328 

effect a part of them. A trade-mark can not be patented as 
a desii^n. 

William Whyte, 71 C. D. 304. 
See subject of design patents for a combination of colors 
discussed in Weinberg, 1871 C. I). 344. Produced in the stat- 
utes relating to designs means created. 
Weinberg, 1871 C. D. 244. 
The kind of material used and process of construction have 
nothing to do with the patentability of a design, a claim 
which stands only uj)on novelty of forms, and can not be 
strengthened by their introduction. 
b. H. Sellers, 1870 C. D. 58. 
Doctrine of genus and species as applied to designs dis- 
cussed. 

W. M. Bartholomew, 1869 C. D. 103. 

Rule 80. Terms of Design Patents. 

Patents for designs are granted for tlie term of 
three and one-lialf years, or for seven years, or for 
fourteen years, as the applicant may, in his applica- 
tion, elect. 

Where the applicant requests that the patent issue 
for one of the shorter terms, he may, at any time 
before the allowance of the application, upon the pay- 
ment of the additional fee, amend his application by 
requesting that the patent be issued for a longer term. 

HISTORY. 

Eev. Stat., sec. 4931. • ■ 

Add to Eule 80 the following paragraph, where the appli- 
cant requests that the patent issue for one of the shorter 
terms, he may at any time before the allowance of the appli- 
cation upon the pa^^ment of the additional fee, amend the 
application by requesting that the patent be issued for a 
longer term. 

Order Xo. 2,102, 200 0. G. 1. 

CONSTRUCTIONS. 

The election may be changed any time before allowance. 
Forward, 196 0. G. 275. 



329 PROCEEDINGS. Eule 81 

Rule 81. Proceedings. 

The proceeding's in applications for patents for de- 
signs are substantially the same as in applications for 
other patents. Since a design patent gives to the 
patentee the exclusive right to make, use, and vend 
articles having the appearance of that disclosed, and 
since the appearance can be disclosed only by a pic- 
ture of the article, the claim should be in the broadest 
form for the article as shown. 

Eev. Stat., sec. 4933. 

CONSTRUCTIONS. 

A number of patents were introduced in evidence to show 
the prior state of the art. These do not show to the court 
such a universal knowledge of the features which the plaint- 
iff's patent, 'No. 38,855, sought to protect as would require a 
limitation of the claim. While one or two of the letters or 
figures of the font may be similar to the like characters or 
character of the prior j)atents, a casual examination clearly 
demonstrates that as a whole there is such dissimilarity of 
configuration and ornamentation of the font described in 
patent No. 38,855 as involves patentable novelty. 

Keystone Type Foundry v. Wynkoop, 339 F. E. 355. 
The invention is not the article and is not the design per 
se, but is the design applied. 
Cady, 232 0. G. 621. 
The invention resides at least partly in the very act of 
adaptation to the article. 
Cady, 232 0. G. 620.' 
The statute requires the applicant to specify some one 
article of manufacture to which he has applied the design, it 
seemingly can not be required that his patent be limited to 
one article. 

Cady, 232 0. G. 620-621. 
The applicant should state in his specification that his 
design is to be used as the figure of an enumerated number 
of articles. 

Cady, 232 0. G. 679. 
A disembodied design or mere picture is not the subject of 
patent and the specification must not so state. 
Cady, 232 0. G. 621. 



Eule 81 PEOCEEDINGS. 330 

Applicant may state that his design is not to be limited 
to an article in three dimensions. 
Cady, 233 0. G. 621. 
Where applicant has shown the design applied to one 
article he has reduced it to practice and he may state other 
articles to which the design is to be applied if, and only if, 
the mode and effect of such application have been rendered 
obvious by the example given. 
Cady, 232 0. G. 621. 
A design patent gives no right to a name by which the 
design may become knovna. 

Wilson V. Hecht, 216 0. G. 1319. 
Block letters had been previously used, no invention in 
putting them in sets to be used by children. 

Baker & Bennett Co. v. W. D. Case Co., 216 0. G. 1014. 
May apply to things having movable parts. 
Klemm & Schreiber, 218 0. G. 603, 1. 
Mechanical advantages no bearing upon the question of the 
patentability of a design. 

Sherman, 147 0. G. 237. 
The St. Louis, Premier, and Shirly were exhibited side by 
side in the courtroom at the time of the argument. We 
thought then, and further examination convinces us, that de- 
fendant's radiator does not infringe. There is nearly as 
much difference between the Shirly and Premier as the Pre- 
mier and St. Louis. Both patents may be treated as valid 
within narrow limits. 

Am. Eadiator Co. v. Shirly, etc., 199 Fed. 424. 
It is evident that the mere fact that one device looks like 
another has no controlling effect in determining the validity 
of a design patent, because such patent does not operate as 
a trade-mark, nor involve considerations of unfair competition 
in business. Color constitutes no element of a design patent. 
Star Bucket Pump Co. v. Butler Mfg. Co., 198 P. E. 863. 
The ornamental design for leather or like material as shown 
is proper. The amendment cancelling "substantially" and 
substituting "or any colorable imitation thereof" disapproved. 
Owen, 195 0. G. 1049. 
We suppose it is true that a design which by mere merit 
attains quick and great popularity must have the grace of 
novelty; but a great popular demand which is stimulated and 
worked up by much money and ingenuity spent in advertis- 
ing does not go far in suggesting the same attribute. 
Phoenix Knitting AVorks v. Eich, 194 F. E. 716. 
It seems somewhat absurd to claim such configuration as 



331 PEOCEEDINGS. RuIg 81 

part of an ornamental design which is only visible when the 
article to which it pertains is not in use. 

Phoenix Knitting Works v. Hygenic, etc., 194 F. E. 699. 
The practice of dispensing with a formal description re- 
ferred ,to but not criticised. 

Phoenix Knitting Works v. Hygenic, etc., 194 P. 699 ; 
Phoenix Knitting Works v. Louer Bros., 194 P. 701. 
Eequirement of the elimination of the description disap- 
proved. 

Phoenix Knitting Works v. Eich, 194 P. E. 710. 
There is no invention in aggregating separate designs. 

Phoenix Knitting Works v. Hygenic, etc., 194 P. E. 699. 
Surface ornamentation taken into account. 
It is not clear what if any part shape and configuration 
may plav as the basis for a design patent. 

Phoenix Knitting Works v. Hygenic Co., 194 P. E. 699. 
Where the seemingly unimportant variations in details pro- 
duced an important general effect, there was invention and 
the design was patentable. 

Weatherly, 191 0. G. 833. 
Design patents no longer attempt to describe in literary 
parlance the effect of the ocular sensation conveyed by the 
dravsdngs; and the court in the present instance must limit 
the scope of the complainant's design patent to the discovery 
or teaching shown in the patent, and must examine the ex- 
hibits. 

Graff, Washbourne & Dunn v. Webster, 189 P. E. 905. 
Suggestion of utility as an element of beauty. 
. Ashley v. Talum Co., 186 P. E. 339, pages 342-3. 
As to description, see Cady, 332 0. G. 620 and 621, in 
connection with Ashley v. Talin Co., 186 P. E. 339. 

Whether a painting possessing artistic merit, but suitable 
also for use as a design, may at the owner's election be pro- 
tected either by copyright or by patent. I believe the ques- 
tion should be answered in the affirmative, but it can only 
be treated in one way. 

Louis De Jonge Co. v. Brenker & Kessler Co., 182 Ped. 
150. 
A certain production held to be either copyrightable or 
patentable, but not both. 

Louis De Jonge Co. v. Brenker & Kessler Co., 182 Ped. 
150. 
We can not find in the lower dome of his patent combined 
with a square base any useful function, although the com- 



Rule 81 PEOCEEDINGS. 332 

pleted structure may be more artistic and att^f active; but that 
element would be the subject of a design patent. 
Ashley v. Talum Co., 173 0. G. 262. 
It is well settled that a design patent can be granted only 
upon a single shape or configuration, and not upon several, 
and that there is no distinction between generic and specific 
design patents as is recognized in mechanical patents (82 0. 
G. 1988; 83 0. G. 1994; 83 0. G. 1513; 110 0. G. 2015; 97 
0. G. 1373; 113 0. G. 2215). 
Lette, Jr., 160 0. G. 1272-3. 

Mygatt, 121 0. G. 1676; Cheney Bros. v. Weinret, 157 
0. G. 1002. 
A design patent held not invalid for want of description 
in words. 

Cheny Bros. v. Weinret & Weiner, 157 0. G. 1002. 
Utility an argument in favor of a design. 

In re Sherman, 154 0. G. 839. 
Generally speaking the mere looks of things do not bear 
upon their novelty, except in case of a design patent. 

Davton Malleable Iron Co. v. Forster Waterburv & Co., 
i53 0. G. 201-204. 
A design patent though invalid may apparently anticipate 
a mechanical patent. (Cary Mfg. Co. v. ISTeal (C. C), 90 
Fed. 725.) 

Williams Calk Co. v. ^Teyerslip Mfg. Co., 136 F. E. 212. 

A mechanical patent may be void because of a previously 

granted design patent where the two are indistinguishable 

in their characteristics, and manifestly the outcome of one 

and the same invention idea. 

Williams Calk Co. v. Keverslip Mfg. Co., 136 Fed. 212. 
An examination of the model of the design and the draw- 
ing leads us to the conclusion that the design in question 
relates to that class where a description is not only proper, 
but necessary, and that the claim should carry a description 
of the salient features of the design. This is rarely the case. 
Mygatt, 121 0. G. 1678. 
The absence of any description of the design is authorized 
by the Patent Office rules relating to designs. 
Schraubstadter, 120 0. G. 1167. 
The preamble to a claim should be limited to the words 
"I claim." 

Weihman, 118 0. G. 2252. 
The drawing should show the article as it appears to ob- 
servers and should not include a panoramic view of the orna- 
ments to be placed thereon. 

Weihman, 118 0. G. 2252. 



333 PROcEEDii^GS. Rule 81 

He describes matters which are clearly shown in the draw- 
ing. The present practice of the Office is to dispense with 
all such descriptions as surplusage and as calculated to mis- 
lead. 

Mygatt, 117 0. G. 598. 
The description should not deal with the use to which the 
article is put, the function which it performs or its mechan- 
ical construction, since it would lead the unskilled to suppose 
that they constitute essential elements of the design for which 
protection is furnished bv the design patent. 
Mygatt, 117 0. G. 598. 
In design cases the claim covers merely the design which 
the applicant discloses, and any attempt to vary the scope of 
the claim by the words used is objectionable, since it is likely 
to confuse the public. 

Claim "for design and form" the words "and form" 
should be canceled. 

Kahn, 116 0. G. 2008. 
The statement that "the shape or outline of the blade forms 
no part of the design" required to be canceled, in accordance 
with the rule announced in Ex parte Freeman, 104 0. G. 
1396, and Ex parte Goldsmith, 110 0. G. 309. 
Eemington, 114 0. G. 761. 
The claim must be limited to a single article of manu- 
facture, bv changing the words "metal blades" to metal blade. 
Eemington, 114 0. G. 761. 
The claim should be to the design as a whole, any limita- 
tion to specific features may make the claim objectionable in 
form, but can not make the aj^plication allowable that was not 
so without such limitation. 
Kurz, 113 0. G. 2215. 
When the ornamental appearance must be seen by a glance 
at the drawing, it is clearly superfluous to attempt to describe 
its appearance in the specification. Descriptive matter and 
reference letters on the drawing required to be erased. 
Lloyd, 112 0. G. 251. 
A drawing should show every feature, but a description 
except to indicate the figure is unnecessary. 
Goldsmith, 110 0. G. 309-310. 
Amendment to the specification is not necessarily an altera- 
tion of the claims. 

Segelhorst, 109 0. G. 1887. 
In a patent for a design a picture of the design serves to 
convey a greatly more adequate idea of the design than any 
description could possibly do; and in the presence of the pic- 



Rule 81 PROCEEDINGS. 334 

ture, a superadded verbal description is generally useless and 
often times confusing. 

Freeman, 109 0. G. 1339. 
This descriptive language in connection with the drawings 
in the case, illustrates the utter futility of attempting by 
words to describe the appearance of an object which may be 
perceived immediately upon the inspection of a picture there- 
of. In designs the appearance is the new thing which is to 
be secured by a patent. Words do not explain, but rather 
confuse when added to the disclosure of the drawing. For 
this reason such descriptive material should be reduced to a 
minimum, or better still, entirely eliminated from a design 
patent specification. 

Freeman, 104 0. G. 1396; Freeman, 109 0. G. 1339. 
Amended descriptive matter may emphasize one feature or 
another, but it can not change the design. 
Hanson, 103 0. G. 1417. 
The claim covered the design as an entirety and that can 
not be changed. 

Hanson, 103 0. G. 1417. 
If an applicant claims in a design application subject mat- 
ter for which a design patent can not be granted the claims 
must be rejected. 

Waterman, 1903 C. D. 235, 100 0. G. 333. 
A figure illustrating the internal construction of an article 
should be eliminated from the drawing. 
Tucker, 1901 C. D. 140, 97 0. G. 187. 
Experimental use does not apply to a design. As to anti- 
cipating, 

See Tournier, 90 0. G. 1948 ; same case on appeal to the 
Court of Appeals; 94 0. G. 3165. 
All reasons for rejecting shall be given by the Examiner 
at one time. 

Sherman & Harms, 89 0. G. 3067. 
There is no such distinction as generic and specific in 
design patents as there is in mechanical patents. 

Feder v. Poyet, 1899 C. D. 318, 89 0. G. 1343. 
The claims of a design patent are related as generic and 
specific when one has more elements than the other. 
Coe, 1897 C. D. 187, 81 0. G. 3086. 
An applicant may describe and claim variations m his 
patentable form within such limits as are consistent with 
unity of design and to the extent claimed, and may use 
mechanical language. 

Lunken, 1896 C. D. 33, 76 0. G. 785. 



335 PROCEEDINGS. Eule 81 

In a design application showing more than one modifica- 
tion applicant is permitted to show, describe, and claim modi- 
fications generally. 

Bark, 1894 C. D. 108, 69 0. G. 369. 
Where certain words and figures (numerals) appeared on 
the illustration of a design, held that they should be erased 
if they form no part of the design. 

Van Slyke, 1892 C. D. 175, 60 0. G. 893. 
A specification comprising two separate descriptions of the 
same subject matter of invention that are substantially alike 
except that one contains references to the drawings, is un- 
necessarily prolix. 

Kinney, 1892 C. D. 72, 60 0. G. 737. 
The word "manufacture" does not include such a generic 
term as the word "tableware." 

Proeger, 1891 C. D. 182, 57 0. G. 546. 
Sufficiency of description. 

Pegel, 1891 C. D. 93, 55 0. G. 1528. 
The question of similarity or dissimilarity arising upon the 
comparisons of designs is determined by the eye of the ordi- 
nary obseryer and not by the judgment of experts. 
Petzold, 1891 C. B] 97, 55 0. G. 1652. 
An application for a design patent, which the applicant has 
elected to prosecute for the shortest period prescribed by law, 
can not be amended to run for a longer period after favorable 
action on the merits. 

Kinnear, 1890 C. D. 54, 51 0. G. 156. 
A claim must be for a segregable integral part, or for the 
entire design. 

Pope, 1883 C. D. 74, 25 0. G. 290. 
Applicant is not confined to one claim. 
Sheppard, 1870 C. D. 22; Beattie, 1879 C. D. 142. 
Applicant should be required to erase from his description 
all reference to the function of the device. 

Diffenderfer, 1872 C. D. 154; Norton, 22 0. G. 1205; 
Fairchild, 1873 C. D. 45. 
More than one design can not be included in one patent. 

Beattie, 1879 C. D. 142, 16 0. G. 267. 
If the device claimed is not shown either in drawings or 
models, and is capable of such illustration, the applicant has 
not complied with section 27 of the Act of July 8, 1870, and 
Eule of Dodge, 1870 C. D. 149. 

The application for the reissue was based solely upon al- 
leged ambiguities and uncertainties in the wording of the 



Rule 84 DRAWINGS. 336 

claims rendering them in efEect mechanically inoperative. 
Therefore, under the application itself, there was no warrant 
for amending the claims except in so far as verbal corrections 
were necessary to make them mechanically operative. 

Grand Eaj)ids Show Case Co. v. Baker et al., p. 1360. 

Rule 82. Arrangement of Specification. 

The following order of arrangement should be ob- 
served in framing design specifications : 

(a) Preamble, stating name and residence of the 
applicant, title of the design, and the name of the 
article for which the design has been invented. 

(b) Description of the figure or figures of the draw- 
ing. 

(c) Claim. 

{d) Signature of applicant. 

CONSTRUCTIONS. 

The words "in testimony whereof" immediately preceding 
the signature is surj^lusage. 

Pappenhagen, 79 Ms. D. 157. 

Rule 83. Model. 

"When the design can be sufficiently represented by 
drawings a model will not be required. 

Eev. Stat., sec. 4930. 
Rule 84. Drawings. 

The design must be represented by a drawing made 
to conform to the rules laid down for drawings of 
mechanical inventions. 

(For forms to be used in applications for design 
patents, see appendix.) 

CONSTRUCTIONS. 

An unsigned photograph is not a compliance with this rule. 
Bennett, 189 0. G. 1033. 



337 DRAWINGS. Rule 84 

A cross-section may be used at the election of applicant if 
it helps to illustrate the exterior construction of the article. 
Lahmann, 184 0. G. 287. 
Additional drawings required. 

Mygatt, 180 0. G-. 1395. 
The edges of the prism that form the upper surface of the 
shade constitute reflecting surfaces and are not merely super- 
ficial ornamentation. It is therefore obvious that the contour 
of the article is as much a part of the design as the prisms 
which are formed on the outside of the shade. It is neces- 
sary that the design be shown accurately in the drawing. A 
side elevation proper. 

Mygatt, 171 0. G. 125. 
The drawing in design cases should show the article as it 
appears to observers and therefore (in this case) a cross- 
sectional view is not admissible. 
Kohler, 116 0. G. 1185. 
The fact that the present drawing was made with a pen 
does not remove the objection to it, since it is made up of 
fine dots instead of continuous lines. 

Lloyd, 112 0. G. 251-2; Kohler, 116 0. G. 596. 
Design patents have nothing to do with, the interior con- 
struction, but are concerned solely with the external appear- 
ance, a figure showing the interior construction is objection- 
able. 

Colton, 104 0. G. 1119. 
Applicant should not be permitted to show in his drawing 
anything more than the design on which he wishes a patent. 
Modifications do not exist in design. 

Burdick, 1901 C. D. 184, 97 0. G. 1373. 
In design patents it is the showing of the design which is 
of primary importance, the description being merely auxiliary 
to the showing. 

Feeler v. Poyet, 89 0. G. 1344. 
If an inventor has a generic design capable of modification, 
that is, a design made up of a small number of simple ele- 
ments to which other elements may be added without modi- 
fication of the essential elements, he should, in order to secure 
protection for the generic design, show the design in his appli- 
cation in its simplest form. He must show the genus stripped 
of additions. 

Feder v. Poyet, 1899 C. D. 218-220-221, 89 0. G. 1343. 
A drawing of a design case should disclose the entire de- 
sign, not merely a part thereof. 

Parker, 1897 C. D. 73, 80 0. G. 1892. 



Rule 85 GRANTING REISSUE. 338 

Under the old rule allowing photographs in some cases. 
The discretion of the Commissioner of Patents is not lim- 
ited by the statute to dispensing with the model of the design. 
The chief draftsman is the proper person to decide whether 
a line drawing is practicable. 

Aumonier, 1893 C. P. 77, 63 0. G. 1815. 
The discretion as to whether a photograph or line drawing 
shall be required rests with the Commissioner. 

Poole, 1893 C. D. 233, 61 0. G. 1655; Petzold, 1892 C. 
D. 235, 61 0. G. 1789. 
Unessential features should be erased from the drawing. 

Eequa, 1893 C. D. 148, 60 0. G. 395. 
Every applicant for a design patent has an undoubted right 
to show both the observe and reverse of the ornamental work 
which he has devised. Should illustrate like portions of the 
device claimed. 

Diffenderfer, 1873 C. D. 154. 

REISSUES. 
Rule 85. Granting- Reissue. 

A reissue is granted when the original patent is in- 
operative or invalid by reason of a defective or in- 
sufficient specification, or by reason of the patentee 
claiming as his invention or discovery more than he 
had a right to claim as new, provided the error has 
arisen through inadvertence, accident, or mistake, and 
without any fraudulent or deceptive intention. 

Reissue applications must be made and the speci- 
fications sworn to by the inventors if they be living. 

Eev. Stat., sees. 4895, 4916. 

CONSTRUCTIONS. 

The proposition that A was under a special duty arising 
out of the fact that he is a reissue applicant, which is the 
main ground of my decision, is in accord with the general 
treatment of the subject of reissues by the courts. 

Lette, Jr., v. Armstrong (motion for rehearing), 232 0. 
G. 938. 
A reissue application should be expidited. 
Altman, 330 0. G. 1373. 



339 GKANTiNG REISSUE. Rule 85 

A first reissue abandoned claims in the original, a second 
reissue allowed to reinsert them, but one who had gone into 
the manufacture of such device because of the first reissue 
was allowed to continue. One judge thought the original 
claims ought not to have been inserted in second cases. 

Autopiano Co. v. American Player Action Co., 217 0. 
G. 1055. 
Defendant's position seems to be that there never can be a 
reissue of a claim once allowed in the original and omitted 
from a first reissue; but to this proposition we do not assent. 
Autopiano Co. v. American Player Action Co., 217 0. 
G. 1055. 
There is no reason why the mistake should not be corrected 
even though it occurred in an attempt to amend, as by mis- 
take as to what the prior art contained. 

Autopiano Co. v. American Player Action Co., 217 0. 

G. 1055. 

These can not be remedied by reissue nor can the deliberate 

act of applicant's attorney in protracted proceedings in the 

Patent Office leading to the issu.e of the patent, be treated as 

the result of inadvertence, accident, or mistake. 

Grand Bapids Show Case Co. v. Baker et al., 208 0. 
G. 1359. 
Eegardless of the question as to whether the entire reissue 
patent is rendered void by the insertion of a new and unau- 
thorized claim, as suggested, obiter in Liggett v. Avery, 101 
U. S. 259, it is clear that such claim of the reissue patent is 
itself void and will not sustain a bill for infringement. 
(Cases.) 

Grand Eapids Show Case Co. v. Baker et al., 208 0. G. 
1359-1360. 
If, by reason of inadvertence, accident or mistake,, a pat- 
entee fails to claim any part or all of the actual invention 
disclosed in his specification and drawings, and intended or 
sought to be covered, the patent is to be deemed to such 
extent "inoperative" and may be lawfully reissued so as to 
cover the entire invention in its claims. (Cases.) 

Grand Rapids Show Case Co. v. Baker et al., 208 0. G. 
1359. 
If the patentee has described but failed to claim the means 
used by this defendant, probably he may apply to the Patent 
Office and claim them yet. 

Loraine Development Co. v. General Electric Co., 198 
F. E. 116. 
As clearly they did not intend to abandon the claim that 



Rule 85 GKANTING EEISSUE. 340 

tlie drop-bars in themselves constituted an invention, we 
shonld not impute to them an intention to abandon the ar- 
rangement and location of their drop-bars whereby they could 
S'ain the advantaa'e due to the special form of drop-bar. 
Coldwell Geldard Co. v. Statford Co., 197 F. E. 573. 
"We find no case where it has been held that when a patent 
has been issued to a party for all he claimed in his applica- 
tion the party may subsequently make a new application for 
a new patent upon omitted matters, and that such new appli- 
cation was a continuation of the first or original application, 
without surrendering the first patent and obtaining a reissue 
of the first for the unexpired term of the first patent, as pro- 
vided in section 4916 E. S. 

Model Bottling- Machine Co. v. Anheuser Busch B. Assn., 

190 F. E. 576. 
Weber v. Automobile & Accessories Mfo-. Co., 190 F. 
E. 193. 
A reissue is not necessarily void because it contains broad- 
ened claims. 

"Weber v. Automobile »S: Accessories Mfg. Co., 1S9 F. E. 
193. 
A reissue to correct manifest errors in the specification and 
to more fully describe the construction illustrated in the 
drawing rests upon a dili'erent footing from a reissue to in- 
clude enlarged claims, and a showing in excuse of the delay 
which would be sulficieut in the first case may not be so in 
the second. 

Tilden. 182 0. G. 971. 
A patent will not be reissued with enlarged claims upon 
an application filed more than two years after the grant of 
the original patent unless unusual circumstances are shown 
to excuse the delav. 

Tilden, 182 0. C. 971. 
Apiparently the rule is more strict as to delay in the case 
of a second reissue. 

Tilden. 182 0. G. 971. 
Claims abandoned in original can not be reinstated (after 
ten Tears). 

'^^ational Casket Co. v. Stolls, 197 F. E. 940. 
The defense of laches being negative does not strongly 
appeal to the courts where the reissue narrows the claims. 
In such cases more delay in applying for a reissue, even for 
a long period (12 years) does no more than suggest laches. 
There being nothing on the face of the original patent to 
charge the patentee with notice that his claims were too 



341 GRAXTixG EEissuE, Rule 85 

broad, proof that the patentee acted with reasonable diligence 
when he was put to the inquiry whether his claims were con- 
fined to the actual invention is sufficient to negative laches. 
(Mahn v. Harwood, 113 U. S. 554.) 

Steiner, etc., v. Tabor Sash Co., 178 F. E. 831-842. 
Xeither the defendant nor any other member of the pub- 
lic obtained any rights by infringing the device, disclosed in 
the original patent, and which is protected by the reissue. 
The doctrine of intervening rights can not be invoked in such 
a case. The claims were narrowed in this case. 

Steiner, etc., v. Tabor Sash Co., 178 F. R. 831-843. 
If the solicitor fails to understand and properly describe or 
claim the real invention, by making claims so broad as to be 
anticipated, or so narrow as to be inoperative, this is such 
a mistake as to authorize a reissue if authorized on other 
grounds. 

Toledo Computing Scale Co. v. Monevweight S. Co., 178 
F. E. 559. 
The general power of reissue, however, does not depend 
upon statute, but on the general spirit and purpose of the 
constitution, and the laws relating to patents. 

Toledo Computing Scale Co. v. Moneyweight S. Co., 178 
F. E. 560. See this case in Court of Appeals. This 
was held by the Supreme Court in Grant v. Eavmond, 
6 Pet. 218. 
While inadvertence and diligence are usually mixed ques- 
tions of fact and law, yet as all the facts are generally of 
record, without dispute or conflict, the proper deduction is a 
conclusion of law and will be reconsidered by the court. 

Toledo Computing Scale Co. v. Moneyweight S. Co., 178 
F. E. 559. 
Certain mistakes, even though present, are not enough. 
Examples of these are mistakes creating public rights acted 
on or arousing an estoppel in favor of another patentee, as in 
Dobson V. Lees, 137 XT. S. 258, and mistakes attended with 
negligence and laches. 

Toledo Computing Scale Co. v. Monevweight S. Co., 178 
F. E. 558-9. 
A disclaimer was introduced into the specification which 
was afterwards found erroneous. The public had acted on 
the disclaimer. Eeissue to remove the disclaimer improper. 
Casern Co. v. Collins Co., 155 0. G. 554. 
That the invention was shown in the original drawing not 
sufficient. 

ZS^elson V. Felsing and Felsing v. Xelson, 142 0. G. 289. 



Eule 85 GEANTING REISSUE. 342 

A delay of two years in filing an application for a reissue 
of a patent with broader claims will usually be treated as an 
abandonment to the public of everything not claimed in the 
original. The rule is based upon the analogy between a re- 
issue application and the case of an inventor who fails to 
apply for a patent of his invention within two years from the 
date of its public use or sale. 
Ams., 127 0. G. 3644. 
A patent may b& reissued to include a process when only 
the apparatus was originally claimed. Inadvertence of at- 
tornev may be remedied by reissue. 
Heroult, 127 0. G. 3217. 
The original claims were directed to the holding and ad- 
justing means alone, and it is now sought to insert by re- 
issue claims covering broadly the combination of the gage 
with the holding and adjusting means. 

It is believed that the invention now sought to be claimed is 
the "same invention" as that intended to be claimed in the 
original patent within the meaning of the statute. 
Hansen, 125 0. G. 2050. 
A delay of five years not excused because counsel advised 
that the claims were as broad as could be secured in view 
of the previous state of the art. 

Arns, 125 0. G. 347; affirmed by C. A. D. C. 
A patent upon an apparatus can not be reissued for the 
purpose of incorporating claims to a process. 

Hirault, 124 0. G. 1843; cites Heald v. Eice, 1882 C. 
D. 215. 
A reissue with broadened claims may be proper. 

In re Briede, 123 0. G. 323. 
Foreign inventor and attorney as an excuse for a delay. 

In re Briede, 123 0. G. 323. 
We must now regard the law as settled by the Supreme 
Court of the United States, that after the lapse of two years 
after the issue of a patent, a reissue which seeks to enlarge 
the claims of the original patent will not be granted, or if 
granted, will be held invalid, unless special circumstances are 
shown to excuse the delay. 

Felbel v. Aguilar, 121 0. G. 1012. 
The entire failure to disclose these in the original appli- 
cation effectually precludes the allowance of claims based 
thereon in any application which relates back to or takes 
benefit from such original application. 
Briede, 117 0. G. 2085. 
There was no attempt to claim the subject matter in the 



343 GRANTING REISSUE. Rule 85 

original application and there is no intimation in the original 
application that the invention covered by the claim submitted 
in the reissue was the invention of the applicant, held that 
the invention covered by the reissue claim must be regarded 
as abandoned or waived. 

Briede, 117 0. G. 2085. 
The intention to claim the invention must evidently appear 
in the original application. 
Briede, 117 0. G. 3085. 
What would have been new matter in the original may not 
be claimed in the reissue. 
Briede, 117 0. G. 2085. 
It is irregular to permit a reissue during an interference. 

Lalleg & Goodrum v. Dean, 111 0. G. 301-2. 
There is no arbitrary limit of two years for the time of 
filing application. 

Powers, 108 0. G. 1051-3. 
A lapse of six years before application, even after a recent 
decision unfavorable to applicant, is fatal to the application, 
also the decision shows that the matter sought to be intro- 
duced is new matter. 

Starkey, 105 0. G. 1259. 
It would seem to be intimated that a patent may be re- 
issued to correct a mistake in withdrawing a claim because 
it was said to be identical with another. 
98 0. G. 582-585. 
Analysis of them will show that there is a distinction well 
marked between reissues broadening the claims of the original 
but confined to the invention therein exhibited, which the 
courts sustain and reissues that depart from the invention 
exhibited in the original and included under its statement of 
invention. 

Crown Cork & Seal Co., etc., v. Aluminum Stopper Co., 
etc., 1901 C. D. 450, 96 0. G. 2579. 
The case shows that the court fully recognized the right 
to modify the claims so as to secure fully the invention de- 
scribed or attempted to be described in the original. 

Crown Cork & Seal Co., etc., v. Aluminum Stopper Co., 
etc., 1901 C. D. 450, 96 0. G. 2578. 
Where an applicant acquiesced in the limited construction 
put on his invention, and at no time during the prosecution 
of his original application suggested or intimated that the 
invention resided in the broad device now sought to be claimed 
in the reissue application, held that the failure to make the 



Eule 85 GKANTING EEISSUE. 344 

claim in the original patent did not arise through inadvert- 
ence, accident, or mistake. 

Bryant, 1896 C. D. Q6, 76 0. G. 451. 
Wollensak v. Sargent & Company, 1894 C. D. 164. 
Identity of language in the claims of two patents does not 
necessarily import that the invention patented to each is 
identical, nor does a difference of phraseology necessarily im- 
port that they are for different- inventions. 

The test of identity is whether both, when properly con- 
strued in the light of the description, define essentially the 
same thing. 

Thompson-Houston Co. v. Elmira Co., 74 0. G. 144. 
Where the claim sought to be reissued is similar to one 
that was presented in the original application and rejected by 
the Office and canceled by applicant in order to obtain his 
patent, held that under su^ch circumstances the applicant is 
estopped from setting up such claim in an application for a 
reissue. 

The claim has apparently properly withdrawn. 

Bowman, 1894 C. D. 35, 66 0. G. 1310. 
Where an applicant has by "inadvertence" claimed less 
than he was entitled to claim he may have a reissue with 
enlarged claims. 

Stanley, 1892 C. D. 166, 60 0. G. 735. 
If an applicant omits to claim an invention that might have 
been claimed, because he did not believe it to be patentable, 
that fact is not sufficient ground for a reissue. It is not 
inadvertence, accident, or mistake. 

Mahnken, 40 0. G. 915; Whiteley v. Bayley & Dver, 36 
0. G. 1142. 
If the associate attorney cancels a claim, the applicant is 
bound by " his act and can not afterwards reassert the with- 
drawn claim by reissue. 

Hatchman, 25 0. G. 979. 
A delay of more than two years is fatal. 

Timken, 24 0. G. 1089. 
An unexplained delay of more than five years is altogether 
unreasonable in a case where the reissue is for the purpose 
of expanding and enlarging the claims. Scope of the claims. 
See 23 0. G. 342, 1882 C. D. 6. 
Claims for inventions patented in foreign countries which 
patents have expired will not be allowed in reissue. 
C. W. Siemens, 1877 C. D. 41, 11 0. G. 1107. 
A clerical mistake in the specification of a patent can only 
be cured bv a reissue. 

Andrew, 1870 C. D. 75. 



345 ABSTEACT OF TITLE. Rule 85 

When mistakes are those of the Office, they will be cor- 
rected without expense to the applicant; but when he makes 
them, they can.be cured only by a surrender of his old patent 
for corrections payment of the fee, and the issue of an 
amended patent. 

Havemeyer Elder & Loosey Assin's Kronig, 1870 C. D. 5. 

Until the reissue is actually issued from the Office the 
original patent remains uncancelled, it is usually deposited in 
the Office with the application. The uniform practice has 
been to return the original patent if a reissue is finally re- 
fused. 

Whiteley, 1869 C. D. 72. 

Rule 86. Abstract of Title. 

The petition for a reissue must be accompanied by 
an order for a certified copy of the abstract of title, 
to be placed in the file, giving the names of all as- 
signees owning any undivided interest in the patent. 
In case the application be made by the inventor it 
must be accompanied by the written assent of such 
assignees. 

A reissue will be granted to the original patentee, 
his legal representatives or assigns, as the interest 
may appear. 

CONSTRUCTIONS. 

Abstract of title and assent of assignee necessary. 
Powers, 108 0. G. 1053-4. 

It is not necessary that the abstract of title and petition 
should agree in all cases. Where the records of the Office 
show an assignment and the assignee's name does not appear 
in the reissue application papers, the Office may properly re- 
fuse to proceed with the examination of the application. This, 
however, is not merely because the abstract of title and the 
petition do not agree, but because the assignee of record has 
not consented to the application. 
Gold, 106 0. G. 998. 

Filing date will not be given until abstract of title is fur- 
nished. The object of rule is not only to show what assign- 



Eule 87 PBEREQUISITES. 346 

ments have been made, but whether an assignment has been 
made. 

Blackmore, 102 0. G. 632. 
A petition to change date of filing in order to bring that 
date within two years from date of patent refused as useless. 
Griffin, 1900 C. D. 83, 91 0. G. 2001. 
Where an application for reissue of a patent which has been 
assigned was not accompanied by the written assent of the 
assignee, but subsequent to the filing of the application the 
assignee reassigned to the inventor, held, that the date of fil- 
ing of the complete application as entered upon the file 
wrapper should be changed to the date upon which the ab- 
stract of title was filed showing the reassignment. 
Pender, 123 0. G. 2975. 
Abstracts of title ought to be insisted upon. 
Wright, 1876 C. D. 217; Fassett, 1877 C. D. 32. 

Rule 87. Prerequisites. 

Applicants for reissue, in addition to the require- 
ments of the first sentence of Rule 46, must also file 
with their petitions a statement on oath as follows: 

(a) That applicant verily believes the original pat- 
ent to be inoperative or invalid, and the reason why. 

(b) When it is claimed that such patent is so inop- 
erative or invalid ''by reason of a defective or insuffi- 
cient specification," particularly specifying such de- 
fects or insufficiencies. 

(c) When it is claimed that such patent is inopera- 
tive or invalid "by reason of the patentee claiming 
as his own invention or discovery more than he had 
a right to claim as new," distinctly specifying the 
part or parts so alleged to have been improperly 
claimed as new. 

(d) Particularly specifying the errors which it is 
claimed constitute the inadvertence, accident, or mis- 
take relied upon, and how they arose or occurred. 

(e) That said errors arose "without any fraudulent 
or deceptive intention" on the part of the applicant. 



347 PREREQUISITES. Rule 87 

CONSTRUCTIONS. 

Oath to be submitted to Law Examiner, Order 3,255, 237 
0. G. 1. 

No mere inference can take the place of such proof. Ordi- 
narily what is called for by the words same invention should, 
appear in some way on the face of the original patent, and 
it can not be gathered from mere inferences or suggestions 
with reference to what the patentee might or might not have 
conceived. 

Stafford Co. v. Coldwell Gildard Co., 202 0. G. 745. 

While some of the requirements of Eule 87 may possibly 
go beyond the power conferred, a matter which we are not 
now called upon to decide, there is nothing in so much of the 
rule as is mentioned above that is inconsistent with the 
statute. 

Fullagor, 192 0. G. 1263. 

Having disclosed the process, the failure to claim was either 
intentional or the result of inadvertence, accident or mistake 
for which section 4916, Ee vised Statutes, furnishes a remedy, 
Heruilt, 137 0. G. 3217. 

Where a domestic patent was granted Feb. 20, 1883, and a 
British patent for the same invention was sealed August 30, 
1883, and a reissue application was filed January 31, 1893, 
held, that since the term of the reissue would not be affected 
by the foreign patent, it was unnecessary to require the re- 
issue applicant to recite the British patent in his oath. 
Cowles, 1893 C. D. 135, 65 0. G. 3060. 

Order of proceeding by the Examiner: First, whether or 
not the original patent is inoperative or invalid; second, if 
so, for what reason?; third, if so, did the error arise from an 
advertence, accident or mi.stake, and without fraudulent in- 
tention ; fourth, whether there are any references. 
Ernst, 33 0. G. 335. 

The statement must allege facts, the opinion of the allegor 
is not sufficient. 

Timken, 34 0. G. 1089; Pfaudler, 33 0. G. 369. 

Applicant should state if foreign patents have been issued 
for the invention, and the dates of such patents should be 
given. 

C. W. Siemens, 1877 C. D. 41. 



Rule 88 NEW MATTER. 348 

Rule 88. New Matter. 

New matter shall not be allowed to be introduced 
into the reissue specification, nor in the case of a ma- 
chine shall the model or drawings be amended except 
each by the other. 

CONSTRUCTIONS. 

Claims for matter not in the inventor's mind when original 
apphcation was made void. 

Smith Incandescent Light Co. v. Welsbach Gaslight Co., 
197 F. E. 951. 
An application can only be reissued for matter that was 
contemplated in the original. 

Sovereign et al. v. Lettie, 185 0. G. 830. 
The invention was shown in the original drawings, but was 
only referred to in the application for a reissue. Held void. 
Marvel Buckle Co. v. Alma Mfg. Co., 180 P. E. 1003; 
refers to Parker & Whipple Co. v. Grele Lock Co., 
123 IJ. S. 87, 8 Sup. Ct. 38, 31 L. Ed. 100. 
The new matter added is not limited to a new theory. It 
contemplates an intentional variation in construction, and the 
new theory explains what takes place with the new construc- 
tion. ISTot admissible. 

Taylor, 183 0. G. 1033. 
Original for combined devices reissue for one of the com- 
bined devices. Eeissue valid. 

Hareford v. Hollander, 163 P. E. 948. 
A reissue which seeks to enlarge the claims of the original 
patent will not be granted or if granted will be held invalid 
unless special circumstances are shown to excuse the delay. 
In re Starkey, 104 0. G. 3150; Court of Appeals D. C. 
A patent for a machine can not be reissued to cover a 
process. 

Pfaudler, 1883 C. D. 17, 33 0. G. 1881. 
A claim can not be inserted in a 'reissue for matter which 
was described but not claimed in the original specification. 
Pfaudler, 33 0. G. 1881. 
An applicant for reissue is entitled to make use of any 
terms in describing his invention in a reissue application 
which would have been correct in the original application. 
Bissell & Moore Mfg. Co., 1870 C. D. 157; Coleman, 
1880 C. D. 305. 
A suggestion of a new use may be inserted in a reissue. 
Palmer, 1880 C. D. 139, 17 0. G. 976. 



349 NEW MATTER. RuIg 88 

It is proper to remedy a defective description by reissue. 

Siemens, 1877 C. D. 98, 12 0. G. 626. 
Affidavits can not be received as to an element not shown 
in the model. 

Stockwell V. Haines, 1877 C. D. 82, 12 0. G. 137. 
Illustrations of last clause. 

Ingraham, 1871 C. D. 164; Dieckerhoff, 1877 C. D. 77, 
12 0. G-. 429. 
A reissue can not be based upon a void patent, as upon one 
issued upon an application subscribed and sworn to in blank. 
Benton, 23 0. G. 341. 
Or upon a patent issued to joint inventors for an invention 
made by but one. 

Barsaloux, James & Lyon, 1878 C. D. 154. 
Where the ambiguity is explained in a manner not incon- 
sistent with the original invention, and where the patent is 
clearly inoperative by reason of such ambiguity, it is but 
just that the discretion reposed by the law in the Commis- 
sioner should be exercised in favor of the patentee upon 
sworn statements of the character herein filed. 

Gottstein, 1877 C. D. 47; Winslow, 1876 C. D. 96. 
A patent may be reissued to include an invention shown 
in the original drawing, but not shown in the drawing at- 
tached to the patent. 

Baldwin, 1876 C. D. 76. 
No new matter should be introduced. 

Aldrach & Evans, 1876 C. D. 40. 
The Office has been compelled to construe the provisions of 
this rule as literally as a court would a criminal statute. 
Warring, 1871 C. D. 228. 
The applicant should be held rigidly to the language 
adopted in his patent except when good reasons appear for 
departing from such language. 

Underwood, 1872 C. D. 118, 1 0. G. 549. 
Testimony may be received as to a lost model as a basis 
for an amendment of the drawings. 

Xeal & Adams v. Daniels, 1871 C. D. 156. 
Examples of new matter. 

Lewis, 1871 C. D. 82. 
The drawings can not be amended by the written descrip- 
tion alone. 

Keith, 1870 C. D. 69; Dodge, 1869 C. D. 27. 



Rule 89 DIVISION of reissue. 350 

Rule 89. Division of Reissue of Application. 

The Commissioner may, in his discretion, cause 
several patents to be issued for distinct and separate 
parts of the thing patented, upon demand of the ap- 
plicant, and upon payment of the required fee for 
each division of such reissued letters patent. Each 
division of a reissue constitutes the subject of a sep- 
arate specification descriptive of the part or parts of 
the invention claimed in such division; and the draw- 
ing may represent only such part or parts, subject to 
the provisions of Rule 50. Unless otherwise ordered 
by the Commissioner, all the divisions of a reissue 
will issue simultaneously; if there be any controversy 
as to one division, the others will be withheld from 
issue until the controversy is ended, unless the Com- 
missioner shall otherwise order. 

CONSTRUCTIONS. 

Where an application is filed for the reissue of a patent, 
held that division can not be required. (Ex parte Lippincott, 
16 0. G. 632, overruled.) 

Van Kostrand, 1913 C. D. 215. 
Examples of a division required by the Commissioner. 
Lippincott, 1879 C. D. 212, 16 0. G. 632; see Van 
Nostrand, 1913 C. D. 215. 
The Commissioner has power to issue the several divisions 
at different times. 

Greaves, 1880 C. D. 213; Decision of Secretarv, 18 0. 
G. 623. 
An applicant can not disaggregate his machine, and set up 
as a part of the same invention a special organization of 
parts producing some special effect he desires to cover, to the 
entire exclusion of all other results regularly flowing out of 
the complete device as originally organized. 
Powell, 1878 C. D. 72, 13 0. G. 911. 
A patent may be divided and reissued to eliminate- the part 
covered by expired foreign patents. 
■ Pulvermacher, 1876 C. D. 154. 
In an application for reissue parts of a device can not be 



351 MATTER IN A REISSUE. Rule 92 

selected to make up a new device not hinted at in the original 
patent. 

Wheeler and Wheeler, 1873 C. D. 101, 4 0. G. 3. 
If the inventor of a process finds that the same result can 
be obtained vi^ithout carrying out the entire operation, he is 
entitled to the benefit thereof, and he may. secure it, if he be 
a patentee by reissue. 

Wooten, 1873 C. D. 364, 3 0. G. 521. 

Rule 90. Reexamination of Reissue Claims. 

An original claim, if reproduced in the reissue 
specification, is subject to reexamination, and the en- 
tire application will be revised and restricted in the 
same manner as original applications, excepting that 
division will not be required. 

CONSTRUCTIONS. 

It is proper to cite patents which were granted subsequently 
to applicant's filing date, but on applications filed prior to 
that date. 

Bryan, 178 0. G. 886. 

Rule 91. Original Patent. 

The application for a reissue must be accompanied 
by the original patent and an otfer to surrender the 
same, or, if the original be lost, by an affidavit to that 
effect, and a certified copy of the patent. If a reissue 
be refused, the original patent will be returned to ap- 
plicant upon his request. 

CONSTRUCTIONS. ■ 

If claims in patent are rejected on reissue application it 
does not affect the claims in the patent before the original 
patent is canceled and reissue issued. 
100 0. G. 449. 

Rule 92. Matter to be Claimed only in a Reissue. 

Matter shown and described in an unexpired patent 
which is an indivisible part of the invention claimed 



Rule 93 IlsrTEEFEKENCE DEFINED. 352 

therein, but which was not claimed by reason of a de- 
fect or insufficiency in the specification, arising from 
inadvertence, accident, or mistake, and without fraud 
or deceptive intent, can not be subsequently claimed 
by the patentee in a separate patent, but only in a 
reissue of the original patent. 

CONSTRUCTIONS. 

See notes under the heading "Eeference to Applicant's Pre- 
vious Patent." Eule 66. 

An interference dissolved as one of the applicants con- 
tains claims made in violation of this rule. 
Du Bois V. McCloskey, 1880 C. D. 142. 
An inventor can not claim in a second patent matter de- 
scribed but not claimed in a former |)atent to himself. 

Hill v. Prentice, 24 0. G. 1176; Hill v. the Com. of 
Patents, 33 0. G. 757. 
This rule must be administered in subordination to the 
statute securing the right of issue. If the thing shown, but 
not -claimed, in the two patents can not be lawfully claimed 
on reissue of the earlier, but can be lawfully claimed on 
reissue of the later patent, it may be so claimed, notwithstand- 
ing the rule; for the rule can not be permitted to defeat the 
law. 

Locke, 1879 C. D. 311. 

INTERFERENCES. 
Rule 93. Interference Defined. 

An interference is a proceeding instituted for the 
purpose of determining the question of priority of 
invention between two or more parties claiming sub- 
stantially the same patentable invention. In order to 
ascertain whether any question of priority arises, the 
Commissioner may call upon any junior applicant to 
state in writing the date when he conceived the inven- 
tion under consideration. All statements filed in 
compliance with this rule will he returned to the par- 
ties filing them. In case the applicant makes no reply 



353 INTERPEEENCE DEFINED. Rule 93 

within the time specified, not less than ten days, the 
Commissioner will proceed upon the assumption that 
the said date is the date of the oath attached to the 
application. The fact that one of the parties has al- 
ready obtained a patent will not prevent an interfer- 
ence, for although the Conunissioner has no power to 
cancel a patent, he may grant another patent for the 
same invention to a person who proves to be the prior 
inventor. (As amended June, 1917.) 

Rev. Stat., sec. 4904. 

HISTORY. 

See Ewing, Com., v. U. S. ex rel. The Fowlor Car Company 
Case, Ct. of A. D. C. and S. C, 226 0. C. 700. 

See notes to 127. 

Lowery^s Interference Eules, §§ 1, 3 and 4, page 111, has 
the following: 

§ 1. Introduction. 

The first statutory provision relating to interferences was 
that of the Act of 1793, Chap. XI, Section 8, which provided 
that interfering applications should be submitted to arbitra- 
tion, and established a rule for the selection of the arbi- 
trators. 

There was no further legislation on the subject until the 
Act of 1836, which established the United States Patent 
Office, with the Commissioner of Patents as its head, and 
which provided in Section 8 for a form of procedure in the 
Patent Office in cases of interferences. 

Section 16 of the same act gave a remedy by bill in equity 
on an adverse decision of the Board of Examiners in the case 
of an interfering application and an unexpired patent. 

The Act of 1870 repealed that of 1836 and reenacted in 
Sections 42 and 46 the substance of Section 8 of 1836. To 
these correspond Sections 4904 and 4909 of the Revised Stat- 
utes now in force. 

§ 3. Rules of the Patent Office. 

The Act of 1839, Section 12, conferred on the Commis- 
sioner of Patents the authority required for the making of 
regulations in respect to the taking of evidence to be used in 



Rule 93 INTERFEEENCE DEFINED. 354 

contested cases before liim; this power was further enlarged 
by the Act of March 2, 1861, Section 1. 

"These provisions were reenacted in Section 43 of the Act 
of 1870, and are now embodied in Section 4905 of the Ee- 
vised Statutes. 

The Act of March 2, 1861, Section 2, established a Board 
of Examiners-in-Chief, and provided that they should be 
governed in their action by the rules to be prescribed by the 
Commissioner of Patents. 

The Act of 1870 greatly enlarged this power, and in its 
nineteenth section authorized the Commissioner, subject to the 
approval of the Secretary of the Interior, to establish rules 
and regulations for the conduct of proceedings in the Patent 
Office. 

It is from this enactment, repeated in Section 483 of the 
Eevised Statutes, that the accompanying rules derive their 
force. 

The conclusiveness of the Patent Office rules has been con- 
sidered in: 

Arnold v. Bishop, 1841, Cranch Ch. J. 1 Mac A., Pat. 
Cases 27; Nichols v. Harris, 1854; Morsell, J. Ibid 
302; O'Hara v. Hawes, 1859; Morsell, J. Law's Digest 
96; Dyson, ex parte 1860; Dunlop, J. Ibid 96. 

§ 4. Editions of the Rules. 

It is said that in 1820 the Secretary of State issued a set 
of instructions relating to applications for patents, and as 
early as 1828 we find in the Franklin Journal, 2d Sr., Vol. 
2, page 332, directions of a semi-official nature for the guid- 
ance of persons applying for patents; but the first official 
publication of Patent Office rules is undoubtedly that of 1836, 
which appeared simultaneously with, and was based upon, the 
new law of the same year. From then on various editions 
have been issued with which we are not concerned; that of 
November, 1869, being the last prior to the passage of the 
Act of July, 1870.'' 

CONSTRUCTIONS. 

The Commissioner is required to put the machinery of the 
law in operation by the declaration of an interference. It 
is not possible for him by any short cut he may devise to 
deprive the applicant of this right. 

Ewing, Com., v. U. S. ex rel. The Fowler Car Company, 
226 0. G. 700. 



355 INTEEFEEENCE DEFINED. Rule 93 

The Supreme Court reversed the Court of Appeals in this 
case. 

Ewing, Com., v. Fowler Co., 238 0. G. 983. 

During the year the practice of having all prospective inter- 
ferences between applicants for patents submitted to one of 
the law examiners has been continued. A total of 1,823 inter- 
ference proposals were reviewed by the law examiner assigned 
to this task. Of these, 924, or 51 percent, were approved as 
submitted; 583, or 29 percent, were approved after modifica- 
tion; and 369, or 20 percent, were disapproved; 1,286 new in- 
terferences were declared, and in 168 existing interferences 
new parties were added. In 344 of the interferences orders 
to show cause were issued to all junior parties. But for the 
mandamus granted by the Court of Appeals of the District 
of Columbia in the case of United States ex rel. Fowler Car 
Co. V. Commissioner of Patents, the number of interferences 
actually declared would have been reduced by several hun- 
dred. The amount of labor involved, both for the office and 
litigants, in disposing of several hundred interferences in 
which no question of priority of invention is involved is very 
gi'eat, and several hundred applicants are denied their pat- 
ents when they demand them and are harrassed and put to 
expense at the instance of applicants who presumably have 
no right to the invention in controversy. The Fowler case 
has been taken up by the Supreme Court of the United States 
on a writ of certiorari and is to be argued there, it is hoped, 
at an early date. 

Commissioner's Eeport, 1916. See paper by Commissioner 
Ewing, read before the Examining Corp. 

T's design application was rejected upon design patent to 
A. The Examiner thought A's application was allowable over 
the previous state of the art and that T's was not, and re- 
fused to declare an interference, but said if T's and A's 
devices were held to be alike on appeal, he would declare the 
interference. Held the interference should not be declared 
until the subject matter was held to be patentable. 
Taylor, 174 0. G. 287. 

Whether the senior applicant may be entitled to priority of 
invention as against all persons, is not the issue in an inter- 
ference case between two claimants of the invention; but the 
question is whether the junior applicant has established his 
own claim to priority over that of his apponent, 
Boisart v. Pohl, 135 0. G. 453. 
In re Mills, 117 0. G. 904. 
Schubert v. Munro, 113 0. G. 284. 



Rule 93 INTERFERENCE DEFINED. 356 

Equities are not with a sole applicant in trying to dis- 
solve an interference with an application that he has made 
as a joint applicant. The question should be investigated. 
Girard v. Abbott, Girard & McGerr, 103 0. G. 662. 
Eecent amendment. 

Lane v. Hunter, Jr., 1893 0. D. 43. 
There may be an interference in fact on a generic issue 
based on two devices which are specifically different. 
Kolb V. Hemingway v. Curtis, 120 0. G. 2445.- 
Some of the claims constituting the issue were made in 
this case; but others have not been made and can not be made 
here for the reason that there is no foundation in this case 
for them. It is therefore impossible to include this case in 
the interference upon the issues there stated. The declaration 
of a second interference including a part of the issue in the 
first would also be improper. 
Adams, 119 0. G. 650. 
Where the terms of an issue are generic there may be an 
interference in fact although the device of the parties may 
differ in specific details. 

Sanders v. Melvin, 119 0. G. 1921. 
The devices were different, but the issue was to parts hav- 
ing corresponding functions. Held properly declared. 
Walker v. Brunhoff, 118 0. G. 2537. 
Where the devices of the parties are identical in substance 
so far as they are defined by the claims in issue, though 
such devices differ in specific characteristics to which said 
claims are not limited, held that there is interference In fact 
as to such claims. 

Greer v. Christy, 116 0. G. 297. 
If the Examiner does not regard the claims as patentable 
he should reject them and applicant's remedy is by appeal on 
the question of patentability. 
Dukes, 115 0. G. 803. 
Where one of two alleged joint inventors refused to sign 
the specification the Commissioner said since no patent could 
be issued upon this application, the Office must refuse to 
make the examination which is ordinarily made and must 
refuse to conduct an interference which is one form of species 
of examination. (Refers to 4 Wall. 527.) 
In re Adam, 106 0. G. 999. 
Do not claim substantially the same invention when the 
counts include an element not found in one applicant's claims 
and when the claims include elements not found in counts. 
Wheildon v. Tench, 106 0. G. 763. 



357 INTERFERENCE DEFINED. Rule 93 

An interference will not be declared where the Office is 
willing to allow applicant's claims over the issued patent. 
Gibloney, 105 0. G. 976. 
In order to constitute an interference in fact the language 
of the counts must mean the same thing when applied to 
each of the interfering inventions. 

MacDonald v. Edison, 105 0. G. 973. 
There is an interference in fact between two applications 
disclosing the same process notwithstanding one describes 
two preliminary steps as preferable, or if one describes as 
preferable though not essential the employment of an addi- 
tional intermediate step. 

Power V. Proeger, 1902 C. D. 483, 101 0. G. 3108. 
Whether application was altered or not in issue, at least in 
this particular case. 

Snider v. Bunnell, 1902 C. D. 460; 101 0. G. 2572. 
Questions proper to an interference will not be considered 
in a separate application. 

Stone, 1902 C. D. 434, 101 0. G. 2080. 
The question of originality, except as between the parties, 
will not be considered. 

Trufant v. Prindle v. Brown, 1902 C. D. 397, 101 0. 
G. 1608. 
The interference was between an application and a patent 
and also an application for the reissue of said patent. Two 
claims that were in the patent were rejected in the applica- 
tion for reissue on reference to opponent's English patent and 
the rejection acquiesced in. Held that the two claims were 
still involved in the interference. 

Eead v. Scott, 1902 C. D. 242, 100 0. G. 449. 
Interference cases will not be entertained for the purpose 
of settling a moot question but only to determine priority. 
Weston V. Jewell, 1902 C. D. 20, 98 0. G. 417. 
In trade-marks the practice follows that of mechanical pat- 
ents. 

Carey v. New Home Sewing Mch. Co., 1901 C. D. 165, 

97 0. G. 1171. 
Eeece v. Fenwick, 1901 C. D. 143, 97 0. G. 188. 
Between designs applications. 

Tyler v. Amand, 1901 C. D. 301, 94 0. G. 1969. 
The applicant must be found entitled to a reissue before 
the interference is declared. 

Bagot & Dishart, in re, 1900 C. D. 80, 91 0. G. 1802. 



Rule 93 INTERPEREISrCE DEFINED. 353 

Substance, not words, the test of identity. 

Edgecombe v. Eastman v. Houston, 1899 C. D. 207, 89 
0. G. 707. 
The gist of an interference resides in the claim and not in 
mere disclosures in the application. 

Van Depoele v. Daft, 1892 C. D. 15, 58 0. G. 520. 
Where a patent has issue inadvertently and interference 
is subject to the same rules as when between two applications. 
Bechman v. Johnson, 1889 C. D. 184, 48 0. G. 673. 
Doubted if after applicant has voluntarily eliminated his 
claims and apparently abandoned them should be permitted 
after invention has been developed to return after eleven 
years and amend and claim an interference. 

McDonough v. Gray v. Bell v. Edison, 1889 C. D. 9, 46 
0. G. 1245. 
An interference is properly declared between the applica- 
tions of joint applicants and one of said joint applicants 
claiming to be a sole inventor. 

Lovrien v. Banister, 1880 C. D. 152, 18 0. G. 399; 
Kohler v. Kohler & Chambers, 1888 C. D. 19, 43 0. 
G. 247; Welpton, 1873 C. D. 21. 
Where two combinations producing the same effect are 
identical except as to a single element, which is present in 
one but wanting in the other, a case of interference arises, 
because the latter combination if first invented will antici- 
pate and defeat the former. 

Banks v. Snediker, 1880 C. D. 95, 17 0. G. 508; see 
Fletcher v. Abraham, 1870 C. D. 26. 
An application put in interference with two patents so 
that the patentees should incidentally prove their rights as 
to each other. 

Wilson & Matthews v. Yakel & Eogers, 1876 C. D. 245, 
10 0. G. 944. 
An interference is declared between the applications or the 
invention involved rather than between the applicants or 
patentees. 

Hicks V. Keating v. Purvis & Bilgram, 1887 C. D. 40, 
40 0. G. 343. 
The two applications must claim the same invention. De- 
scription in the specification is not sufficient ground for an 
interference proceeding. 

Drawbaugh v. Blake, 1883 C. D. 17, 23 0. G. 1221; 
Emerson, 1880 C. D. 143, 17 0. G. 1461; Wright, 
1870 C. D. 60. 
ISTeither the spirit of the law nor public policy sanction the 



359 INTEEFEEENCE DEFHSTED. Rule 93 

granting of patents with specific claims while applications 
with generic claims are still pending. 

Upton, 1884 C. D. 26, 27 0. G. 99 ; see Gardner v. Dud- 
lev, 1880 C. D. 123, 17 0. G. 801; Bacheller v. Porter 
&''Bancroft, 1869 C. D. 64; Boon v. Hinman, 1870 C. 
D. 7. 
But the Commissioner seems to think differently in 

Drawbaugh v. Blake, 1883 C. D. 17, 23 0. G. 1221. 
The Commissioner can not declare an interference with an 
unlawful application, as with one improperly divided. 

Holt, 1884 C. D. 43, 29 0. G. 171; or with unpatentable 
claims, Jackson v. Nichols, 1871 C. D. 278. 
It is not as a prior patentee that one of two conflicting 
applicants, who have inadvertently obtained a patent, ob- 
structs the application of the other, but as a rival claimant 
or conflicting applicant, necessitating an interference. An 
interference should be declared nunc pro tunc under the first 
clause of Eule 93. (Marston, 1882 C. D. 1, 21 0. G. 633.) 
An affidavit seems to have been required in Upton, 1884 
C. D. 26, 27 0. G. 99, however. 

An interference should not be declared between a native 
and a foreign invention in order to allow the foreign inventor 
to establish the date of his invention in a foreign country, 
as this is an immaterial question. But, upon a proper affi- 
davit being presented, an interference may be declared to 
give the foreign inventor a chance to establish the dates of 
introducing the knowledge of the invention into this country. 
An interference will not be declared in order to show dates 
of publication. 

Thomas v. Reece, 1879 C. D. 335, 26 0. G. 1234; 1888 
C. D. 12, 17 0. G. 195. 
The word "showing" should be construed as in Eule 74. 

Graydon, 1883 C. D. 71, 25 0. G. 192. 
If the original patent is involved in an interference pro- 
ceeding and a reissue is sought, the examination should be 
proceeded with and if the reissue is allowed, the reissue pat- 
ent should be substituted in the interference proceeding. 

Zav, 1881 C. D. 20, 19 0. G. 1496; see also Wright, 
1870 C. D. 60. 
If, pending an interference between A, B, & C whose pre- 
liminary statements have been filed, D shall file an applica- 
tion not claiming or showing the invention in interference, 
but claiming other matter claimed by A and shown by B and 
C, he will be entitled to an interference with A and also upon 
due amendment of the applications with B and C without 



Rule 93 INTERFERENCE DEFINED. 360 

waiting for the final adjudication of the pending interference 
between A, B, and C. 

Smith, 1880 C. D. 77, 17 0. G. 447. 
The claims must conflict in substance not necessarily in 
words. 

Drawbaugh v. Blake, 1883 C. D. 17, 23 0. G. 1321; 
Greenough v. Drummond, 1879 C. D. 213 and 267, 16 
0. G. 959 (16 0. G. 586, 213 and 267). 
The Commissioner can not declare an interference with a 
forfeited application. 

1877 C. D. 122, 12 0. G. 979; Holt, 1884 C. D. 43, 29 
0. G. 171; Spear, 1874 C. D. 25. 
The Commissioner can not declare an interference with an 
abandoned application. 

Casilear v. Mclntire, 1875 C. D. 117; Contra Eouse v. 
Stoddard, 1875 C. D. 33, 7 0. G. 169; see Leavitt, 
1873 C. D. 27. 
It is not necessary to an interference that the combination 
of each party should consist of elements identically the same 
in form so long as the combinations as entireties are the 
equivalents in arrangement and mode of operation. 
Withington v. Locke, 1877 C. D. 27, 11 0. G. 417. 
It was at one time thought that the Commissioner had no 
authority to declare an interference with reissues. 

Becker v. Throop, 1875 C. D. 87; Paris v. Bussey, 1875 
C. D. 145. 
But the practice was soon resumed in proper cases. 

Sargent v. Burge, 1876 C. D. 175, 10 0. G. 285; Carroll 

V. Morse, 1876 C. D. 61, 9 0. G. 452. 

Where the claim in interference is broader in scope than 

the special devices shown by either of the parties, the subject 

matter involved can not be limited to just what is shown by 

either of said parties. 

Sacroix and Welch, 1873 C. D. 155. 
Or by a patent having been granted without an interfer- 
ence as where a caveator failed to receive the notice sent by 
the Office, of the second application. 
Frevert v. Gahr, 1873 C. D. 92. 
The claims differ in this: Chapman claims the process 
described and Finley the article produced; but either might, 
by amendment or reissue, insert the clause of the other. 

I have no hesitancy in deciding that the interference was 
properly declared. 

Liggett in Finley v. Chapman, 1872 C. D. 53 ; see also 
Chesebrough v. Toppan, 1872 C. D. 100. 



361 ' INTERFERENCE DECLARED. Rule 94 

An application will not be prejudiced by the mistake of the 
Office in granting a patent to his opponent instead of declar- 
ing an interference between the applications. 

Goodman v. Scribner, 1872 C. D. 354; Hamilton v. 
Foster, 1869 C. D. 30. 
The devices of applicants differ as much from each other 
as they do from the device which was prior to both of them. 
They are improvements upon that original, but not upon each 
other. They perform the same result, but they differ in their 
mode of performing it, which is their principle of operation, 
as much as they differ from the original; l;here can, there- 
fore, be no conflict between them. 

Barton v. Babcock, Manton & Boyd, 1869 C. D. 67. 

Rule 94. When Declared. 

Interferences will be declared between applications 
by different parties for patent or for reissue when 
such applications contain claims for substantially the 
same invention which are allowable in the application 
of each party, and interferences will also be declared 
between applications for patent, or for reissue, and 
unexpired original or reissued patents, of different 
parties, when such applications and patents contain 
claims for substantially the same invention which are 
allowable in all of the applications involved: Pro- 
vided, That where the filing date of any applicant is 
subsequent to the filing date of any patentee, the ap- 
plicant shall file an affidavit that he made the inven- 
tion before the filing date of the patentee. 

Parties owning applications or patents which con- 
tain conflicting claims will be required before an in- 
terference is declared to show cause why these claims 
shall not be eliminated from all but one of the appli- 
cations or patents of common ownership.- 

CONSTRUCTIONS. 

The Supreme Court say that an applicant has two (2) 
years from the grant of a patent in which to insert the 
claims thereof, reversing the Court of Appeals D. C. as 
shown in next paragraph. 

Chapman v. Wintroath, 272 0. G. 913. 



Rule 94 INTEEFEKENCE DECLAEED. 362 

Failure for more than a year to make claims of patent an 
estoppel unless explained. 

Wintroath v. Chapman et al., 348 0. G. 1003, 1004. 
Eules 125 and 94 seemingly conflict in the present instance. 
The inventor can not be bound to make concession of Eule 
125. 

Schreiber v. Bauer, 258 0. G. 813. 
If two applications are pending at the same time no affi- 
davit required in-order to justify an interference. 
Soille, 90 0. G. 2133. 
If a patent is issued upon an application claiming an in- 
vention, while another application showing but not claiming 
it is pending, the second applicant may make the claim-s and 
have an interference declared without making the affidavit. 
Timley, 1899 C. D. 248, 89 0. G. 2259. 
When two applications are pending contemporaneously the 
necessity for such an affidavit does not exist. 
Simonds, 114 0. G. 1549. 
Specific and generic claims do not interfere. 

Williams v. Perl, 87 0. G. 1607. 
A case passing on the subject matter of this rule : 

Forbes v. Thomson, 1890 C. D. 61, 51 0. G. 297. 
An interference with an unexpired patent will not be de- 
clared until the application is rejected with reference to that 
patent. 

Massicks & Crooke, 1887 C. D. 20, 38 0. G. 1489. 
The affidavit under Eule 94 does not call for a showing of 
facts. The Office may call for such a showing. 
Eies V. Thomson, 1891 C. D. 233. 
The affidavit required must identify the invention in con- 
troversy and state that affiant made it before the patentee's 
application was filed, but it does not call for a statement of 
facts showing date of invention. The right to .call for such 
a showing is discretionarv with the Office. 
Davis, 1893 C. D. 41. 
Said not to require a statement of facts as in Eule 75. 

Eies V. Thomson, 1891 C. D. 233, 57 0. G. 1598. 
The affidavit must state facts from which the conclusion 
can be reached that the invention was made before the pat- 
entee's application was filed. 

Graydon, 1883 C. D. 71, 25 0. G. 192. 
Eule said to have been amended since Graydon was decided 
and above said to be a mere dictum. 

Eies V. Thomson, 1891 C. D. 233, 57 0. G. 1598. 



363 PREPARATION FOR INTERFERENCE. Rule 95 

Rule 95. Preparation for Interference. 

Before the declaration of interference all prelim- 
inary questions must be settled by the primary exam- 
iner, and the issue must be clearly defined; the inven- 
tion which is to form the subject of the controversy 
must have been patented to one of the parties or have 
been decided to be patentable, and the claims of the 
respective parties must be put in such condition that 
they will not require alteration after the interference 
shall have been finally decided, unless the evidence 
adduced upon the trial shall necessitate or justify 
such change. 

In case the subject matter in controversy has been 
patented to one of the parties but is deemed by the 
examiner not to be patentable, he shall call the case 
to the attention of the Commissioner, who may direct 
the declaration of the interference. 

CONSTRUCTIONS. 

See notes to Eules 96 and 97. 

Disclosure mnst be shown in original application, and must 
be such as required for an application by the statute. 
Cooper V. Downing, 230 0. G-. 909. 
In reaching a conclusion as to what one skilled in the art 
would do we are confined to the application as originally filed. 
Testimony not admissible. 

Cooper V. Downing, 230 0. G. 909. 
Apparently to warrant the introduction of a claim of a 
patent the disclosure in the original application must be that 
required for the invention of an application. 
Cooper V. Downing, 230 0. G. 909-10. 
Where it is necessary that an application be amended before 
a patent can issue, it is desirable that the amendment be made 
during the interference. 

Liebmann et al. v. Newcomb, 229 0. G. 613. 
In declaring an interference each count of the issue should 
be patentably distinct from all the others. 

Votey V. Walsh, Jr., v. Duncan, 111 0. G. 1627. 
The Examiner states that if broader claims are allowed a 



Rule 95 PREPAEATION FOR INTERFERENCE. 364 

new interference will be necessary, this is a matter relating 
to the merits. The proposed claims should be entered. 
Thnrman, 111 0. G. 1625-26. 
95 and 96 should be considered together. When so con- 
sidered it will be noted that 95 relates only to the claims of 
the issue. There is no rule which prohibits the formal entry 
and consideration of an amendment after the proceeding has 
terminated. 

Thurman, 111 0. G. 1625-26. 
The question whether or not an applicant, whose applica- 
tion is involved in interference, has a right to make the claim 
put in issue is determined and becomes res adjudicata by the 
declaration of interference so far as the interference proceed- 
ings are concerned. 

Herman v. Eullman, 109 0. G. 1890. 
The declaration of an interference is an allowance of the 
claims it would seem. 

Lug;er v. Browning, 1902 C. D. 230, 100 0. G. 231. 
If claims are not formally allowed it is not such a matter 
as will be considered on appeal on other grounds. 
Lug-er V. B., 1902 C. D. 230, 100 0. G. 231. 
Should be construed together. It is not the policy of the 
Office to delay the declaration of an interference after one of 
the interfering applications is ready for issue any longer 
than is absolutely necessary. 

The same reasoning applies where one is a patentee. 
It is not fair to a patentee for the Office to permit delays 
in the declaration for the purpose of first requiring questions 
to be settled which do not in any way aifect the interference 
issue. 

It is otherwise where the claims would form counts of the 
issue. 

Sponi, 07 0. G. 1375. 
The claims should be liberally construed in favor of declar- 
ing an interference. 

Drawbaugh v. Blake, 1883 C. D. 17, 23 0. G. 1221. 

There can be but little hesitation in choosing between the 

natural interpretation which sustains the interference as 

declared and a forced construction of the same, which, in 

effect puts two of the parties out of court. Especially where 

former action of the Office had indicated the first construction. 

Locke V. Levalley, 1881 0. D. 26, 20 0. G. 671. 

In determining whether two applications conflict, the 

claims should be construed with reference to the specification. 

Greenough v. Drummond, 1879 C. D. 213 and 267, 16 

0. G. 586 and 959; Duthie v. Caslear, 1872 C. D. 50. 



365 PREPARATION FOR INTERFERENCE. Rule 95 

Confusion caused by a violation of this rule illustrated the 
Primary Examiner allowed matter alleged to have been im- 
properly introduced in violation of Eule 69 to remain in the 
specification. 

- Wm. Carlock, 1875 C. D. 88. 

See example of unsettled claim in Farnsworth v. Andrews, 
1876 C. D. 3, 9 0. G. 195. 

The patent to Clinton and McXamara is not an anticipa- 
tion of any of the counts for the same reason that the 
"^Hillard's Exhibit No. 2 typewriter equipped with escape- 
ment of 1891" is not a reduction to practice of the invention. 
Brooks V. Hillard, 1903 C. D. 335, 106 0. G. 1237. 

Construction of the Issue. 

See also notes to Rules 96 and 97. 

A claim should be given the broadest interpretation that 
it will reasonably support, and limitations will not be read 
into it to meet exigencies. (Miel v. Young, 29 App. D. C. 
481; Getz et al. v. Crozier, 32 App. D. C. 324; Western Elec- 
tric Co. V. Martin, 39 App. D. C. 147 ; Leonard v. Horton, 
40 App. D. C. 22.) But, where the difference in the inven- 
tions clearly appears, the claims should be given a reasonable 
interpretation consistent with the specification in which they 
originated to the end that the real inventor may be given 
the award of priority. 

Murphy v. Cooper, 228 0. G. 1458. 

Evidence considered and held to justify an award of priority 
to appellee, especially in view of the original attitude of 
appellant as to the name and function of an important ele- 
ment of his early machine. (Headnote.) 
Ruggles V. Ash, 226 0. G. 699. 

"Means for causing said nozzles to follow the direction of 
the tube." 

We agree with the tribunals of the Office that such means 
must be within the blower itself, and does not include a ball 
and socket joint which permits of the nozzles being guided by 
resting in the tubes. 

Coe V. Brown, 225 0.- G. 372-373. 

The additional bend forms no part of the loop, especially 
in appellee's device, and hence to insert it into the claim 
would not be the mere construing of it, but the reading into 
the claim of a limitation not called for to save it from de- 
struction. 

Clulee V. Aat, 224 0. G. 742. 



Bule 95 PEEPARATioisr for h^'terpeeence. 366 

In an interference proceeding we must give to claims the 
broadest interpretation which they will reasonably support, 
and we are not at liberty to import limitations therein to 
meet the exigencies of a particular situation. (Cases.) 
Kirby v. Clements, 216 0. G-. 1319. 

"Adapted^^ does not necessarily imply an actual combi- 
nation with the element to which it refers. 

In making his claim the inventor is at liberty to choose 
his own form of expression, and while the court may construe 
the same in view of the specifications and the state of the 
art, they may not add to or detract from the claim. (Quoted 
from Unhairing Co. v. American Co., 198 U. S. 399) in 
Diamond Patent Co. v. Carr .Co., 316 0. G. 327. 

Seymour's device includes means for cutting the sheets 
one at a time, etc., and there is a substantial advantage in 
this process. 

In Barber's machine the sheets are cut two at a time and 
there is no suggestion in his application of a mechanism by 
which it would be possible to cut sheets one at a time, etc. 
By no fair interpretation of the language could "a sheet" be 
construed to cover a group of sheets. Barber had no right 
to make the claim. 

Barber v. Seymour, 215 0. G. 1500. 

Where the application of W. & H. discloses two composi- 
tions, one containing wax but not benzol and the Other benzol 
but not wax, this application does not disclose the use of both 
benzol and wax in the same composition. 

Wilson & Harris v. Ellis, 211 0. G. 957. 

The division of the issue into counts implies that the Pat- 
ent Office considers there is a patentable difference between 
the counts (dictum). 

Wilson & Harris v. Ellis, 211 0. G. 957. 

There is a rule which has been long established and many 
times confirmed that all limitations appearing in the counts of 
an interference will in interference proceedings in the Patent 
Office be regarded as material to the invention covered by 
said counts. 

Wilson & Forrest v. Ellis, 211 0. G. 286. 

On the facts as we find them one conclusion of law is that 
claims 1 to 7, inclusive, are limited by their own terms and 
by the prior art to high pressure and small volume means, 
and that claims 8 and 9, unless likewise limited, are void as 
seeking to monopolize the general result. 

Atlas Portland Cement Co. v. Sandusky Portland C. Co., 
196 Fed. 398. 



367 PREPARATION FOR INTERFERENCE. Rule 95 

This rotary motion of the barrel has no purpose in com- 
plainant's pistol except to permit disassembling. The expert 
for complainant so concedes, and since he further concedes 
that in defendant's ]3istol rotation of the barrel plays no part 
in disassembling, we do not deem it necessary to enter into 
any discussion of the prior art. 

Colts Patent Firearms Mfg. Co. v. jSTew York Sporting 

Goods Co., 190 P. E. 564. 

In order to construe the claim properly recourse must be 

had to the specification and the prior art. We can not permit 

siDeeulation and guesswork to guide us as to the character 

and structure of the elements of the claim. The answers to 

"these questions are made clear by an examination of the 

specification and drawings and the proceedings in the Patent 

Office. 

Colts Patent Pirearms Co. v. New York S. G. Co., 190 
P. E. 561. 
When the inventor of a particular device chooses to make 
claims broader than necessary to cover the same, he can not 
when thrown into interference with another inventor in the 
same general field, ask that they be limited to correspond with 
his own particular structure. 

Leonard v. Horton, 189 0. C. 781. 
The words "Pivoted directly to the lazy tongs" does not 
necessarily involve a point in common and is answered by a 
construction which comes substantially within it though not 
literally. 

Leonard v. Pardee, 188 0. G. 516, 559 (186 0. G. 559.) 
The issue may be construed in light of the previous art. 

Eichards v. Benniss, 187 0. G. 514. 
The addition of a new party is no excuse for not having 
comprehended the breadth of the issue. 

Onderdouk v. Eoutke v. Moffat, 183 0. G. 507. 
The holding which is in substance that the disclosure as it 
stands is insufficient to support the claims, but that it may 
be amended in such a way that it will support them, is clearly 
inconsistent on its face. 

Seacombe v. Burks, 182 0. G. 973. 
We have been cited to nothing in the prior art which lim- 
its this expression to the specific construction shown in the 
application since the prior patents all disclose no more than 
means for drawing from a shallow pan. 
Eolin V. Slinghoff, 182 0. G. 975. 
To read the issue, therefore, on to appellee's device where 
the question of patentability is exceedingly close, would be to 



Rule 95 PREPAEATION FOR INTERFERENCE. 368 

give him something strongly anticipated hy the prior art; 
while confining it to appellant's invention we have an easy 
application of the issue to a device distinctly novel, where the 
resetting operation is clearly confined to the breakdown con- 
nection. 

Eice V. Schutte, 180 0. G. 605. 
The issues should be construed as broadly as possible, with- 
out giving a strained or unnatural meaning. 
Emerson v. Sanders, 174 0. G. 831. 
The question of the scope of the issue is, however, not one 
upon which testimony should be permitted. The question is 
one to be determined by the tribunals of the Office under the 
well settled practice of giving claims in issue the broadest 
construction which they will support. Von Keller v. Hayden 
V. Kruh will support Jackson, 173 0, G. 285. 

Von Keller v. Hayden v. Kruh v. Jackson, 173 0. G. 
285. 
The decisions of the Court of Appeals of the District of 
Columbia in the case of Blackford v. Wilder, 127 0. G. 1255, 
and Horines v. Wend, 129 0. G. 2858, in which the court 
discountenances second interferences, emphasize the import- 
ance of a clear and definite issue. 

Walker & Walker v. Gichrist, 164 0. G. 507. 
We, however, think that patents are grants made in con- 
sideration of discoveries which promote the progress of 
science and the useful arts, and that they are to be construed 
liberally so as to effect their real intent. 

Bossert Electric Const. Co. v. Prott Chuck Co., 159 0. 
G. 747. 
A limitation in a claim that is without function ought not 
to be used to deprive an inventor of his rights. 
Arbettor v. Lewis, 154 0. G. 516, 519. 
"Independent circuits" construed in a previous case on a 
different device. 

Weintraub v. Hewett, 148 0. G. 1087. 
Apparently a limitation was disregarded as being non- 
functional, but this limitation was what distinguished it from 
the art. Overruled. 

Sinclair v. Engel, 147 0. G. 769. 
A limitation of the issue not required by the prior art 
refused in order to avoid opponent's date of reduction to 
practice. 

Gutz & Hosack v. Crozier, 140 0. G. 757. 
The party who first presents claims should not later be 
heard to urge limitations upon terms thereof which might 



369 PEEPAEATIOlSr FOR INTEEFEEENCE. Rule 95 

readily have been expressed therein had it been intended that 
they should be so restricted. (Cases.) 

Junge V. Harrington, 131 0. G. 691. 
In the ease of patents for improvements, it is necessary 
to consider the state of the art. 

Oehrle v. W. H. Horstmann Co., 131 F. E. 490. 
The function is not inherent in the mechanism shown for 
the reason that it does not flow from the mechanism as shown 
and described, but from that mechanism minus one of its 
parts. 

Scott V. Southgate, 125 0. G. 1703. 
A metal bar with corrugated sides, the relative position of 
the corrugations on the respective sides being accidental, is 
not evidence of the conception of the invention set forth in 
a claim for a metal bar provided with interceptions in the 
surface and having substantially the same cross-sectional area 
throughout its length. 

Johnson v. Mueser, 124 0. G. 2533. 
Good case. 

Manley v. Williams, 1911 C. D. 397. 
Podlesak v. Podlesak, 123 0. G. 1989. 
Would not construe the qualification in the issue, that the 
tongue was of nonmagnetic material. 

Andrews v. Wilson, 123 0. G. 1667. 
Where claims are copied from a patent they are to be con- 
strued in light of such patent. 

Bourn v. Hill, Jr., 123 0. G. 1284. 
Meanings should not be construed into claims, nor should 
the claims be limited by construction. 
Cutler, 123 0. G. 655. 
Words given a broad meaning so as to include both devices. 

Limp V. Eandall & Bates, 123 0. G. 319. 
Where the terms are broad enough to cover both structures 
it matters not that there are specific differences in function. 
Gordon v. Wentworth, 120 0. G. 1165; Heintzelman v. 
Vroalstad, 120 0. G. 906; see Goss v. Scott, 96 0. 
G. 842. 
Limitations read into a claim by the moving party is not 
ground for dissolution. 

Votey V. Gaily, 119 0. G. 339. 
Claims pending in the Office should not be narrowed by 
reading limitations into them to avoid the prior art. Prac- 
tice condemned. 

Briggs V. Lillie v. Cooke, 116 0. G. 871. 



Rule 96 failure to peepare. 370 

Rule 96. Failure to Prepare for Interference. 

"Whenever the claims of two or more applications 
differ in phraseology, but relate to substantially the 
same patentable subject matter, the examiner, when 
one of the applications is ready for allowance, shall 
suggest to the parties such claims as are necessary to 
cover the common invention in substantially the same 
language. The examiner shall send copies of the 
letter suggesting claims to the applicant and to the 
assignees, as well as to the attorney of record in each 
case. The parties to whom the claims are suggested 
will be required to make those claims and put the 
applications in condition for allowance within a speci- 
fied time in order that an interference may be de- 
clared. Upon the failure of any applicant to make 
the claim suggested within the time specified, such 
failure or refusal shall be taken without further action 
as a disclaimer of the invention covered by the claim, 
and the issue of the patent to the applicant whose ap- 
plication is in condition for allowance will not be 
delayed unless the time for making the claim and 
putting the application in condition for allowance be 
extended upon a proper showing. If a party make 
the claim without putting his application in condition 
for allowance, the declaration of the interference will 
not be delayed, but after judgment of priority the ap- 
plication of that party will be held for revision and 
restriction, subject to interference with other applica- 
tions. 

Whenever it shall be found that two or more par- 
ties whose interests are in conflict are represented 
by the same attorney, the examiner shall notify each 
of said principal parties and also the attorney of this 
fact. 



371 FAILURE TO PEEPAEE. RuIg 96 

'HISTORY. 

A part of Eule 51 of 1878 reads as follows: "Where a 
party who is required to put his case in proper shape for the 
purposes of an interference delays doing so beyond a reason- 
able time specified, the interference will at once proceed. 
After final judgment of priority the application of such 
party will be held for revision and restriction, subject to 
interferences with other applications or new references." 

Only verbal changes were made in 1879. 

The present form of the rule had its origin in the case of 
Hammond v. Hart, decided April 25, 1898. (1898 C. D. 52..) 

See Eule 94 of 1879 as to suggestion of claims. 

In Wolfenden v. Price, 1898 C. D. 87, Commissioner Duell 
said : "In deciding the case of Hammond v. Hart it was my 
intention to bring about a practice in the Office that would 
result in making the issue of an interference both definite 
and clear, and to that end to cause the parties to the pro- 
posed interference to claim substantially the same patentable 
invention so as to obviate the many motions and appeals that 
have unnecessarily arisen in the Office.'" 

The correctness of this decision has been called in question 
in a pamphlet by Mr. J. H. Whitaker published by the Patent 
Law Association of Washington, D. C. 

The edition of the Rules of July 18, 1899, reads: "When- 
ever two or more applications disclose the same invention, 
and one of said applications is ready for allowance and con- 
tains a claim to said invention, the Primary Examiner will 
notify the other applicant of such fact, furnish him with a 
copy of the patentable claim, and require him to make such 
claim and put his case in condition for allowance within a 
specified time, so that an interference can be declared. Upon 
the failure of any applicant to make the claim suggested 
within the time specified, such failure or refusal shall be 
taken without further action as a disclaimer of the invention 
covered by the claim, and the issue of the patent to the appli- 
cant whose application is in condition for allowance will not 
be delayed unless the time for making the claim and putting 
the application in condition for allowance be extended upon 
a proper showing. If a party make the claim without put- 
ting his application in condition for allowance, the declara- 
tion of the interference will' not be delayed, but after judg- 
ment of priority the application of such party will be held 
for revision and restriction, subject to interference with other 
applications. 

See notes to Rules 95 and 97. 



Rule 96 FAILUEE TO PREPARE. 372 

CONSTRUCTIONS. 

(1) PuKPOSE AND Meaning of Eule, 

(2) When Suggestion Peopee. 

(3) CONSTEUCTION AND EfEECT OF ClAIMS. 

(4) Neglect and Eefusal to Make Claim — Time Limit. 

(5) Additional Cases. 

(1) Purpose and Meaning of Rule. 

An action under this rule establishes a date, from which 
the one year limited for action by the applicant runs. 
• Coulson V. Callendar, etc., 1903 C. D. 395, 101 0. G. 
1607. 
Eule 109 contemplates the possibility of the allowance by 
the Examiner upon argument of claims which were for some 
reason not suggested under Eule 96. 

Davis V. Ocumpaugh v. Garrett, 103 0. G. 1679. 
The procedure of this rule is applicable where it is pro- 
posed to place an application into interference with a patent. 
Card & Card, 112 0. G. 499. 
The requirement as to the form of a claim is not for the 
purpose of bringing about a conflict, but to define the con- 
flicting subject matter in the same words, so as to avoid con- 
fusion and to prevent disputes. 

Card & Card, 112 0. G. 499-500. 
Claims taken from a patent were refused entry because 
involving new matter. 
Dilg, 112 0. G. 953. 
The purpose of Eule 96 is to bring about uniformity in 
the wording of the claims. The practice is a good one. No 
reason appearing why the claims of E. and B. should not 
be brought to correspond in phraseology, the interference 
should have been dissolved on the ground of irregularity in 
the declaration. 

Eeichert v. Brown, 124 0. G. 2903. 
I am of the opinion that the adoption of suggested claims 
and the prosecution of an interference can not be construed 
as an election of the species involved in the absence of other 
acts or statements on the part of the applicant binding him 
to such species. 

Burk, 184 O. G. 2089. 
An application abandoned and renewed, meanwhile a pat- 
ent issued to another applicant. The first applicant inserted 



373 FAILUEE TO PEEPAEE, Rule 96 

claims from the patent, held that this was not contrary to the 
principles laid down in Bechman v. Wood, 89 0. G. 2459. 

Jansson v. Sarsson, 132 0. G. 477. 

Cases passing on the subject matter of this rule. 

Harnisch v. Gueniffit, Benert and Nicault, 128 0. G. 455; 
Martin v. Mullin, 127 0. G. 3216. 

(2) When Suggestion Proper. 

Three applications showing apparatus for performing a 
process only one of which claimed the process. In the latter 
division was required. The process claimed should not be 
suggested to the other applicants as they were not trying to 
claim it (Myers v. Brown, 139 0. G. 197), but if an appa- 
ratus claim covering the three applications can be found it 
should be suggested. 

Wirner, 139 0. G. 197. 

A second species may be suggested to an applicant, and 
incorporated into his application, for the purpose of an inter- 
ference, but may afterward be required to be canceled. 
Priebe, 221 0. G. 351. 

An examination of the record of the patent makes it clear 
that the invention of this issue was not disclosed in the 
original specification and drawings. This omission, coupled 
with the fact that he failed to disclose the same until it was 
admittedly disclosed to him, is almost sufficient of itself to 
warrant the conclusion that McKnight never independently 
invented the invention of the issue. 

McKnight v. Pohle & Croasdale, 105 0. G. 495. 

The question as to the right of Brown to make the claims 
is one relating to the merits of the case and depends upon the 
disclosure made by B in his application. The Examiner has 
held that the disclosure in the Brown application is sufiicient 
to support the claims corresponding to the issue, and from 
this affirmative decision there is no appeal. (Eule 124.) 
Myers v. Brown, 112 O. G. 2093-4. 

Where motion for dissolution is based upon the contention 
that the suggestion of the claim in interference to a party by 
the Examiner was improper because said party had not claimed 
substantially the same invention. Held that the question 
raised involves no such irregularity in declaring the inter- 
ference as might preclude proper determination of the ques- 
tion of priority of invention, and that no ground for dissolv- 
ing the interference is presented. 

Meden v. Curtis, 117 0. G. 1795. 

An interference was decided on the record. In view of the 
fact that the new claims were made by the successful party. 



Rule 96 FAILURE TO PREPARE. 374 

that they differ from the issue in other respects than in scope, 
and that the defeated party already has an allowable claim 
relating to -the same subject matter, it is held that the Ex- 
aminer may properly suggest the new claims to the party 
under Eule 96. 

Cramer & Hoak, 118 0. G. 1068. 

Where an applicant appealed from the refusal of an Ex- 
aminer to inform him of the subject matter of the issue in a 
proposed interference in order that he might amend so as to 
include the issue in his claims. Held that it is not the prac- 
tice of the Office to suggest claims to an applicant in order 
to create possible interferences. 
Weeden, 1893 C. D. 185. 

Where a party shows a certain structure and claims it 
broadly, and his claims are all rejected, and another party 
claims the same structure more narrowly and such claims are 
allowed and suggested to the other party. Held no error in 
so suggesting such claims, as both parties were attempting to 
claim the same invention within the meaning of Eule 96. 
Templin v. Sergent, 119 0. G. 961. 

Claims should be suggested only when parties are attempt- 
ing to claim the same thing. 

Myers v. Brown, 113 0. G. 3093; Templin v. Sergent, 
"119 0. G. 961; Bryant, Wolcott & Davidson, 131 0. 
G. 2663. 

In the case at bar, however, the tension controller of the 
Quest and Hogan application was specifically different from 
the tension controller of the Ostrom application. The prac- 
tice announced in Hammond v. Hart, therefore, would not 
have warranted the Examiner in suggesting the Quest and 
Hogan claims to Ostrom. 

Quest V. Ostrom, 106 0. G. 1503; see also Townsend v. 
Thullen, 143 0. G. 1116. 

The Examiner ignoring the plain dissimilitude between T's 
claim one, allowed by his superiors over his rejection only on 
the narrow construction, and the mufflers Mead is talking 
about in his application, invited the latter as above stated to 
adopt it, and thus gave it a breadth of application for which 
neither its originators ever contended, nor the Examiners- 
in-Chief granted. 

Phoenix Knitting Co. v. Eich, 194 Fed. 735. 

The claims were suggested to appellant under the provi- 
sions of Eule 96. When appellant accepted the claims and 
included them in his application, he laid claim to the pos- 
session of the invention which they define. 

If now the appellant wishes to withdraw the claim to the 



375 FAILURE TO PREPARE. Rule 96 

possession of the invention disclosed in the issue, he may 
properly do so by conceding priority or abandoning the in- 
vention. 

Miller v. Perhams, 127 0. G. 2667. 

(3) Construction and Effect of Claims. 

See notes to Rules 95 and 97. 

Where there are two applications each making a specific 
claim and no generic claim to an invention that might be 
included in one generic claim, in the absence of any means 
of avoiding the possible question^as to equivalents, the Ex- 
aminer Avill suggest a generic claim to the applicants. 
Thompson, 1902 C. D. 6, 98 0. G. 227. 

The question whether those claims can be made by Costello 
and are suggested to him under Rule 96, can not be con- 
sidered as affecting Hicks' rights unless and until Costello 
makes them. 

Hicks V. Costello, 103 0. G. 1164. 

The question of identity of invention is in general one 
which should be settled by the experts of the Office. 
Luger V. Brdwning, 104 0. G. 1123. 

The Hammond v. Hart decision, 83 0. G. 743, (1898 C. 
D. 52) did not make it mandatory on Examiners to suggest 
claims, but merely stated that under certain conditions, no 
good reason appearing for not doing so; the only condition 
expressly referred to was where two applicants disclosed the 
same specific structure and one of the applicants had specific 
claim to the structure and the other a generic claim thereto. 
Quest V. Ostrom, 106 0. G. 1501. 

There seems to be no reason why the Examiner should en- 
ter into a discussion or argument with these applicants as to 
the patentability of suggested claims. 
Sutton & Steele, 107 0. G. 541. 

The claims were suggested to appellant under the provi- 
sions of Rule 96. When appellant accepted the claims and 
included them in his application, he laid claim to the pos- 
session of the invention which they define. 

If now the appellant wishes to withdraw the claim to the 
possession of the invention disclosed in the issue, he may 
properly do so by conceding priority or abandoning the in- 
vention. 

Miller v. Perham, 123 0. G. 2667. 

Where claims are copied from a patent they are to be con- 
strued in light of such patent. 

Bourn v. Hill, Jr., 123 0. G. 1284; Townsend v. Thul- 
len, 142 0. G. 1116. 



Rule 96 FAILURE TO PEEPAEE. 376 

Each of the two applicants for patent has made a claim 
in identical language. The claim reads without violence to 
the proper natural meaning of its terms upon the devices 
disclosed by each party; but the patentable invention which 
this claim is supposed to represent is found only in the de- 
vice of one of the parties; clearly under these circumstances 
the claim fails to define the invention. 

Podlesak & Podlesak v. Mclnnerney, 123 0. G. 1989. 

(4) Neglect and Refusal to MaTce Claim — Time Limit. 

A time limit should be set where claims are rejected on a 
prior patent on the ground that the applicant can make cer- 
tain thereof and can establish his right to a patent only by 
an interference. 

Card and Card, 113 0. G. 499; Weber and Woodford, 
264 0. G. 863. 
Eule 96 provides that upon a proper showing the time for 
making the suggested claims may be extended. It is within 
the discretion of the Examiner to grant such extension if in 
his opinion the showing warrants it. 
Curtis, 97 0. G. 189. 
If applicant is prosecuting his own case, and has gone 
abroad, time to communicate with him should be allowed. 
Hellmund, 141 0. G. 555. 
See example of unsettled claim. 

Farnsworth v. Andrews, 1876 C. D. 3, 9 0. G. 195. 
Where a party unreasonably delays to put his application 
in such form that an interference may be declared, a patent 
will be issued to his opponent. 

Lombard, 1888 C. D. 56, 43 0. G. 1347. 
Claim proposed by Examiner but not accepted for ten years 
and until after an interference on broader claim. 
Gray, 1889 C. D. 91, 46 0. G. 1277. 
The Office and not the applicant is the judge of the rea- 
sonableness of the time. 

Lombard, 1888 C. D. 56, 43 0. G. 1347. 
The time at which the request is made, whether the request 
and accompanying showing be within the time limited or not, 
may affect the character of the showing, but it does not affect 
the jurisdiction of the Examiner. 

Curtis, 1901 C. D. 147, 97 0. G. 189. 
In this case there is an allowable claim under consideration, 



377 FAJXiUEE TO PREPAEE. Rule 96 

and a party who can make it and will not do so within a 
specified time. 

Furman v. Dean, 111 0. G. 1366-68. 
Wliere applicant seeks to enter the suggested claim after 
the expiration of the time limited, the' c-Iaim should be en- 
tered and then rejected. 

Swift, 111 0. G. 2494. 
Where an amendment is filed under the provisions of Eule 
96, after the limit of time specified by the Examiner has 
expired and the Examiner rejects the claims in accordance 
with the rule, the rejection relates to the merits and is not 
reviewable by the Commissioner upon petition, but should 
be considered on appeal in the first instance by the Examiners- 
in-Chief. 

Haug, 97 0. G. 192. 
Applicant refused to put his claims in proper shape insist- 
ing upon his right to amend any time within one year. Held 
that the Examiner should suggest claims to both parties, and 
proceed with the interference leaving any question of estoppel 
for future consideration. If applicant refuses to make claims 
suggested he should be held to have abandoned their subject 
matter. 

Ferris, 114 0. G. 541. 
Where an applicant is a resident of a foreign country, the 
Examiner should grant the attorne}^s petition for a sufficient 
extension of time to consult his client. 

Schulze, 114 0. G. 1550. 
Eule 96 contemplates that the issue shall be in the terms 
of the claims actually made by both parties, or at least that 
both parties should have had an opportunity to make such 
claims. If neither party has made a claim which can be 
made by the other party by reason of the inclusion of ele- 
ments which are not of the essence of the invention, then as 
pointed out in ex parte Thompson (98 0. G. 227), the Ex- 
aminer should suggest a claim to each which will cover the 
real invention common to the two cases, omitting such limita- 
tion. 

McBride v. Kroder, 133 0. G. 1680. 

(5) Additional Cases. 

Cases that pass on the subject matter of this rule : 

Klepetko, 126 0. G. 387; Harvev, 102 0. G. 621-32; 
Holland, 1902 C. D. 199, 99 0.^ G. 2548 ; Haug, 1901 
C. D. 153, 97 0. G. 192; Tizley, 89 0. G. 2259; Hil- 
dreth, 1899 C. D. 248, 1901 C. D. 186, 97 0. G. 1374; 



Rule 97 INTERFERENCE NOTICES. 378 

Van Auken v. Osborne v. Harrison v. Canfield & Van 
Auken, 119 0. G. 1584; Egly v. Schulze, 117 0. G. 
2366; Blackwood v. Wilder, 124 0. G. 319; Anderson 
V. Vrooman, 123 0. G. 2975; Weidemann, 1897 C. D. 
194, 87 0. G. 2245. 

Rule 97. Examiner Preparing Interference Notices, 
etc. 

When an interference is fonnd to exist and the 
applications are prepared therefor, the primary ex- 
aminer shall forward to the examiner of interferences 
the files and drawings; notices of interference for all 
the parties (as specified in Rule 103) disclosing the 
name and residence of each party and those of his 
attorney, and of any assignee, and, if any party be a 
patentee, the date and number of the patent; the 
ordinals of the conflicting claims and the title of the 
invention claimed; and the issue, which shall be clearly 
and concisely defined in so many counts or branches 
as may be necessary in order to include all interfering 
claims. Where the issue is stated in more than one 
count the respective claims involved in each count 
shall be specified. The primary examiner shall also 
forward to the examiner of interferences for his use 
a statement disclosing the applications involved in 
interference, fully identified, arranged in the inverse 
chronological order of the filing of the completed ap- 
plications, and also disclosing the issue or issues and 
the ordinals of the conflicting claims, the name and 
residence of any assignee, and the names and resi- 
dences of all attorneys, both principal and associate. 

HISTORY. 

Previous to the Revision of December, 1879, the Primary 
Examiner was required to notify the parties, and in the 
Rules of 1878 he was required to "briefly and concisely define 
the interfering subject matter." 



379 INTEKFEREFCE NOTICES. Rule 97 

See Eule 97 of 1879. 

See notes to Eules 95 and 96. 

CONSTRUCTIONS. 
Issue and Notices. 
If the Examiner of Trade-Marks finds it necessary to 
include two applications he should take care to specifically 
inform the other party of that fact. 
Hoeker v. Farr, 193 0. G. 220. 
A case that passes on the subject matter of this rule. 

Hick, 172 0. G. 261. 
"Means" followed by a statement of function is properly 
readable on a structure in which such means consists of more 
than one element. » 

Lacroix v. Tyberg, 148 0. G. 831. 
A claim should be given the broadest interpretation its 
terms will permit. 

Milans, 135 0. G. 1122; Pratt v. De Perrantiand Hamil- 
ton, 148 0. G. 569. 
Nevertheless it can not be enlarged beyond the plain im- 
port thereof as set forth in the specification on which the 
claim is based. 

Sinclair v. Engel, 147 0. G. 769. 
It is well settled that where a party copies the claim of a 
patent for the purpose of interference such claim must be read 
in the light of the disclosure of the patent. (Cherney v. 
Clause, 116 0. G. 597; Bowen v. Hill, 123 0. G. 1284; Sobey 
v. Holsclaw, 126 0. G. 304.) 

Sinclair v. Engel, 147 0. G. 769. 
When an interference is declared between an applicant and 
a patentee and the Examiner is of the opinion that the appli- 
cant has presented claims which do not differ, materially from 
the issue of the interference he should append to the declara- 
tion of the interference a statement that such claims, speci- 
fying them by number, will be held subject to the decision in 
the interference. If in his opinion there are no such claims 
he should append to the declaration a statement to that effect. 
The Primary Examiner directed to proceed in conformity to 
this practice. 

Earll V. Love, 140 0. G. 1209. 
Where the only claims are too broad in view of the state 
of the art. 

Kafer & Gould v. Dennison, 1869 C. D. 14. 
The devices in interference should so resemble each other 



Rule 97 INTEEFEEENCE NOTICES. 380 

that a patentable form of claim could be framed wMch shoiild 
include both devices. 

Sargent v. Burge, 11 0. G. 1055. 
The parties have no right to be heard as to what shall and 
what shall not be included in the interference. 
White V. Demarest, 41 0. G. 1161. 
The practice of appropriating literally the claim of a later 
inventor, which is drawn with reference to the employment 
of terms found in the preceding specification, and then apply- 
ing the claims so appropriated to a specification of older date 
which does not contain words and expressions suitable to lead 
up to the language of the appropriated claim, condemned. 
Eogers v. Winssinger, 1891 C. D. 111. 
The test of an interference resides in the claims and not in 
mere disclosures in the application, and Office rules must be 
construed in connection with this settled principle of law. 
Van Depoele v. Daft, 1893 C. D. 15; Searle v. Frum- 
veller v. Sessions, 1892 C. D. 27; Dodd v. Eeading, 
1892 C. D. 49. 
It is improper in declaring an interference, to include a 
broad claim in a narrow issue. The issue should be as broad 
as the broadest claim involved therein. 
Short V. Sprague, 1891 C. D. 166. 
The question whether an interference in fact exists depends 
not merely upon the language employed in the respective 
claims, but upon the question whether in addition to simi- 
larity in phraseology there is an interference between the 
subject matter of the respective claims. 

Eogers v. Winssinger, 1891 C. D. 111. 
It is a cardinal principle that in declaring an interference 
the issue must be as broad as the broadest claim included 
therein. 

Morgan v. Hanson, 77 0. G. 154. 
The correct solution of the question depends upon whether 
.the two things disclosed by the respective parties have been 
clearlv claimed and with the same limitations. 
Essex V. Wood, 89 0. G. 353. 
While it is unfortunate that there should be differences of 
opinion as to the meaning of the issue, such differences alone 
do not justify a dissolution of the interference. 
Annand v. Spalckhaver, 97 0. G. 2083. 
In an interference between a patent and an application, the 
issue is to be defined by reference to the patent. 
Feder v. Poyet, 89 0. G. 1343-4. 
Eule 97 contains nothing to authorize the disclosure of a 



381 iNTERFEEENCE NOTICES. Rule 97 

caveat which may have been referred to during the ex parte 
consideration of a case. 

In re Lowry, 90 0. G. 445; Holland, 99 0. G. 2548. 
The requirement of Eule 97 that "the invention claimed" 
be disclosed, means that the invention claimed should be dis- 
closed by title. 

Holfstetter v. Kahn, 99 0. G. 1634. 
The Office must define the issue and the testimony must be 
confined to this issue. 

Brill & Adams v. Uebelacker, 99 0. G. 2966. 
The Primary Examiner should arrange the parties in the 
inverse chronological order in which they filed their applica- 
tions directly involved in the interference. He should call 
attention to any earlier application and leave the question 
of its effect for the determination of the Examiner of Inter- 
ferences. 

Eaulet & Nicholson v. Adams, 114 0. G. 1827. 
Without further delay of which there has been too much in 
this proceeding. 

ISTormand v. Krimmelbein, 115 0. G. 249. 
Though the applicant is the original inventor of the rotating 
baking surface he has presented no convincing evidence tend- 
ing to prove originality of the combination claims, and priority 
upon these claims is awarded to the patentee. 
Cherney v. Clauss, 115 0. G. 2137. 
Eemedy for failure to comply with this rule is by motion 
under Eule 122. 

Cazin v. Yon Welsbach, 119 0. G. 650. 
Clerical error may be corrected by a letter from the Pri- 
mary Examiner. 

Gully V. Burton, 120 0. G. 325. 
The terms of a claim should be given broadest construction. 

Podlesak & Podlesak v. Mclnnerney, 120 0. G. 2127. 
When a claim is taken from a patent to form an issue, 
that issue must be construed in reference to the specification 
of the patent. 

Andrews v. Nilson, 123 0. G. 1667. 
The senior party who has a patent may not be heard to ask 
that his claim be rewritten so that he may prevail in an inter- 
ference. 

Andrews v. Nelson, 123 0. G. 1667. 
I am of the opinion that these terms are too vague and in- 
definite to point out with certainty any particular structure 
in either device, and that the interference should be dissolved 
as to this count on the ground of irregularity in declaration. 
Anderson v. Vrooman, 123 0. G. 2975. 



Rule 98 EEvisioN of notices. 382 

New references discovered "The Primary Examiner is 
directed to withdraw the notice of hearing which has been 
sent out and to determine whether the interference should 
continue without the aid of argument by either party." 
Behrend v. Lamme v. Tingley, 124 0. G. 2536. 
Care should be exercised in forming the issue that the 
terms used by the parties have a clear, definite, and common 
meaning in each application. 

Anderson v. Vrooman, 123 0. G. 2975. 
Less than half this number of counts should have sufficed. 

Kempshall v. Eoyce, 129 0. G. 3162. 
It is to the interest of the interfering parties, the public 
and the Office that the counts of the interference should prop- 
erly cover the patentable invention which is common to the 
applications involved and that second interferences should be 
avoided. 

Becker v. Otis, 129 0. G. 1267. 
The Office is no more competent than the courts to say 
that an element which an applicant has put into his claim 
is an immaterial one. 

Streat v. Preckleton, 87 0. G. 695; Collom v. Thurman, 

131 0. G. 359. 

In general while applications are pending in the Office the 

claims thereof will be construed as broadly as the ordinary 

meaning of the language will permit, for reasons stated m 

my decisions in Cuter, 123 0. G. 655. 

Briggs V. Cooke v. Jones & Taylor, 116 0. G. 871; 

Podlesak & Podlesak v. Mclnnerney, 123 0. G. 1989; 

Lovejov V. Cady, 123 0. G. 654; Junge v. Harrington, 

131 0." G. 691; Jenne v. Brown v. Booth, 1892 C. D. 

.78. 

See also notes under "Construction of the Issue," Eule 95. 

Rule 98. Revision of Notices by Examiner of Inter- 
ferences. 

Upon receipt of the notices of interference, the ex- 
aminer of interferences shall make an examination 
thereof, in order to ascertain whether the issues be- 
tween the parties have been clearly defined, and 
whether they are otherwise correct. If he be of the 
opinion that the notices are ambiguous or are defec- 
tive in any material point, he shall transmit his ob- 



383 EEFEKEisrcE TO COMMISSIONER. Rule 99 

jections to the primary examiner, wlio shall promptly 
notify the examiner of interferences of his decision 
to amend or not to amend them, 

CONSTRUCTIONS. 

The Examiner properly objected to the declaration of an 
interference on the ground that the invention involved was 
met by the reference of record. 

Lloyd V. Engeman, 1872 C. D. 253. 
A case that passes on the subject matter of this rule. 
Hoffstetter v. Kahn, 1902 C. D. 180, 99 0. G. 1624. 

Rule 99. Reference to Commissioner. 

In case of a material disagreement between the ex- 
aminer of interferences and the primary examiner, 
the points of ditference shall be referred to the Com- 
missioner for decision. 

CONSTRUCTIONS. 

See Dixon v. Bliss, 185 0. G. 1381. 

For example where the interference subject matter is not 
briefly and concisely stated and claims involved are not stated, 
this was an error of the Primary Examiner. 

Stephen v. Bailey, 1878 C. D. 7, 13 0. G. 45. 
Case referred to the Commissioner where there was a dis- 
agreement between the Examiner of interferences and the 
principal Examiner as to whether the claim was met by refer- 
ence of record. 

Lloyd V. Engeman, 1872 C. D. 253. 
Cases that pass on the subject matter of this rule: 

Smith V. Bunnel, 103 0. G. 890; Mills v. Torrance, 106 
0. G. 544; Hoffstetter v. Kahn, 1902~C. D. 180, 99 0. 
G. 1624; Hildreth, 1901 C. D. 186, 97 0. G. 1374. 

Rule 100. Primary Examiner Retains Jurisdiction. 

The primary examiner will retain jurisdiction of 
the case until the declaration of interference is made. 

See notes to Eules 101-123. 

Rule 101. Jurisdiction of Examiner of Interferences. 

Upon the institution and declaration of the inter- 



Rule 101 JUEiSDiCTiojsr of examiner. 384 

ference, as provided in Rule 102, the examiner of in- 
terferences will take jurisdiction of the same, which 
will then become a contested case; but the law exam- 
iner will determine the motions mentioned in Rule 
122, as therein provided. 
See notes to Eule 133. 

CONSTRUCTIONS. 

The reference of motions to dissolve to the Law Examiner 
in the last revision, has made a part of the following notes 
of only historical interest. 

For the reasons stated in my decision in Clements v. Eich- 
ards V. Meissner, 111 0. Gr. 1627, it is competent for the 
Commissioner to entertain a motion to restore jurisdiction to 
the Examiner of Interferences, to hear and determine a mo- 
tion to reopen while the case is pending before any of the 
appellate tribunals of this Office. 

Clausen v. Dunbar v. Schellinger, 129 0. C. 499. 

Jurisdiction of Examiner of Interferences. 

Lowry and Cowley v. Spoor, 122 0. G. 2687. 

Jurisdiction restored to the Examiner of Interferences after 
time limited for appeal had expired. 

The party should have a bearing upon the question whether 
the showing made by him is sufficient to warrant the reopen- 
ing of the ease. 

Lipscomb v. Pfieffer, 122 0. G. 351. 

Motions to shift the burden of proof should be made before 
the Examiner of Interferences within the twenty days after 
the approval of the preliminary statements allowed for mo- 
tions. 

Changing jurisdiction from Primary Examiner to Examiner 
of Interferences. 

Eaulet & Nicholson v. Adams, 114 0. G. 1827. 

The only apparent questions for consideration on a motion 
to restore jurisdiction to the Examiner of Interferences, are 
whether the motion is in proper form and whether so far as 
can be seen without going into the merits of that motion, it 
is brought in good faith. 

Newell V. Clifford v. Eose, 122 0. G. 730. 

Examiner of Interference refused to consider a motion to 
extend time for appeal, made on the last day of the time 



385 JUKISDICTION OF EXAMINER. Rllle 101 

limit and set for hearing two days after for want of juris- 
diction^ jurisdiction restored on motion. 

.lean and Goode v. Hitchcock, 1902 C. D. 342, 100 0. 
G. 3011-12. 
The restoration of jurisdiction for one purpose does not 
restore it for all. 

Benger v. Burson, 1902 C. D. 164, 99 0. G. 1384. 
Motion to reopen for the purpose of taking more testimony 
comes properly before the Examiner of Interferences. 

McCallum v. Bremer, 1900 C. D. 186, 93 0. G. 1918. 
The Examiner of Interferences has jurisdiction to hear and 
determine the fact of joint or sole invention in an interfer- 
ence between joint patentees and a sole applicant who is one 
of said patentees, 

Lovrien v. Banister, 1880 C. D. 152, 18 0. G. 299; Ex 
parte Bruker, M. S. 
If it is decided that there was no joint invention the sole 
applicant would be the prior inventor, as the entity the joint 
inventors never invented it at all. 

Kohler v. Kohler & Chambers, 1888 C. D. 19, 43 0. G. 
247; see Harrison v. Hogan, 1880 C. D. 191, 18 0. G. 
921. 
Upon a proper showing the jurisdiction of the Examiner 
of Interferences will be restored for the purpose of consider- 
ing a motion to dissolve. 

Short- V. Sprague, 1891 C. D. 166. 
Judgment of priority given by the Commissioner and the 
case remanded to the Primary Examiner to determine the 
question of a statutory bar by reason of public use. 
Smith V. Dimond, 1881 C. D. 34, 20 0. G. 742. 
A motion to dissolve an interference declared in violation 
of Eule 127 should be determined by the Examiner of. Inter- 
ferences. 

Edison & Gilliland v. Phelps, 38 0. G. 539; see notes 
to Eule 142, 1887 C. D. 11. 
Questions of statutory bar of public use referred to ' the 
Primary Examiner by the Commissioner without an appeal 
from the decision of the Examiner of Interferences. 
Quimby v. Eandall, 1878 C. D. Ill, 14 0. G. 748. 
Facts establishing two years' public use before application 
for a patent developed in an interference can not afterwards 
be explained away by ex parte affidavits. Case remanded to 
the Primary Examiner to consider such question. 

Stearns v. Prescott, 1878 C. D. 24, 13 0. G. 121. 



Rule 102 INSTITUTION AND DECLARATION. 386 

The question of two years' public use as a statutory bar 
receives consideration from the Examiner of Interferences. 
He overlooks in this connection, the question of sale. This 
appears to be a very important point. This case was re- 
manded by the Acting Commissioner to the Primary ♦ Ex- 
aminer to consider the question of sale more than two years 
before application. 

Keller & Olmesdahl v. Felder, 1876 C. D. 246, 10 0. 
G. 944. 
The law of 1836 provided that in connection with interfer- 
ence proceedings, like proceedings should be had to deter- 
mine which or whether either of the applicants is entitled 
to receive a patent as prayed for. But in the Act of 1870 
this provision was omitted. 

Smith V. Perry, 1876 C. D. 12, 9 0. G. 688. 
Questions of patentable combinations remanded to the 
Primary Examiner for consideration. 

Lynch & EafE v. Dryden & Underwood, 1873 C. D. 73. 
If in the judgment of the Examiner of Interferences neither 
party is entitled to a patent for want of novelty, he must 
send the question back to the Primary Examiner for deter- 
mination. He can not decide it himself. 

Neuboeker v. Schafhaus, 1873 C. D. 138. 
Cases that pass on the subject matter of this rule: 

Kugele V. Blair, 125 0. G. 1350; Behrend v. Lamme v. 
Tingley, 124 0. G. 2536. 

Rule 102. Institution and Declaration of Interference. 

When the notices of interference are in proper 
form, the examiner of interferences shall add thereto 
a designation of the time within which the preliminary- 
statements required by Eule 110 must be filed, and 
shall, pro forma, institute and declare the interference 
by forwarding the notices to the several parties to 
the proceeding. 

Eev. Stat., sec. 4904. 

CONSTRUCTIONS. 

Contains nothing to authorize the disclosure of a caveat 
that may have been referred to during the ex parte considera- 
tion of a case. 

Lowry, 1900 C. D. 1, 90 0. G. 445. 



387 NOTICES TO PAETIES. RuIg 103 

Practice relative to trade-marks. 

Frank & Gutmann v. MacWilliam, 114 0. G. 542. 
Practice in case of a deceased inventor, lieirs unknown. 

Handley v. Bradley, 1899 C. D. 201, 89 0. G. 624. 
jSTotice should be sent to the assignee of one of the in- 
ventors. 

Aldrich & Spalding v. Bingham, 1871 C. D. 90. 
Cases that pass on the subject matter of this rule. 

Davis V. Garrett, 123 0. G. 1991; Kugele v. Blair, 127 
0. G. 1253. 

Rule 103. Notices to Parties. 

The notices of interference shall be forwarded by 
the examiner of interferences to all the parties, in 
care of their attorneys, if they have attorneys, and, 
if the application or patent in interference has been 
assigned, to the assignees. When one of the parties 
has received a patent, a notice shall be sent to the 
patentee and to his attorney of record. 

When the notices sent in the interest of a patent are 
returned to the office undelivered, or when one of the 
parties resides abroad and his agent in the United 
States is unknown, additional notice may be given by 
publication in the Official Gazette for such period of 
time as the Commissioner may direct. 

CONSTRUCTIONS. 

Replying to your letter of the 25th ultimo, you are advised 
that where a series of interferences are declared the issues of 
which are more or less closely related, each interference is 
provided with an identifying letter signifying that particular 
case is one of a series. It ordinarily has no significance to 
the parties and is used only for convenience in keeping the 
cases together. 

Eespectfully, 

W. F. Woodlard, Chief Clerk. 
Case that passes on the subject matter of this rule : 

Commercial Mica Co., 129 0. G. 479; Hick, 172 0. G. 
261. 



Rule 104 MOTION FOR POSTPONEMENT. 388 

Rule 104. Motion for Postponement of Time for Fil- 
ing. 

If either party require a postponement of the time 
for filing his preliminary statement, he shall present 
his motion, duly served on the other parties, with his 
reasons therefor, supported by affidavit, and such mo- 
tion should be made, if possible, prior to the day 
previously set. But the examiner of interferences 
may, in his discretion, extend the time on ex parte 
request or upon his own motion. 

CONSTRUCTIONS. 

Court of Appeals will not review in ordinary cases. 

Churchill v. Goodwin, 141 0. G. 568. 
Facts considered sufficient to excuse the failure to file 
within the time limited. 

Charlton v. Sheldon, 111 0. G. 2493. 
The fact that applicant supposed notice to relate to one 
case when it in fact related to another is not a good excuse. 
Hartley v. Mills, 110 0. G. 2236. 
It is a matter of discretion with the Examiner whether 
time shall be extended. 

Quick V. McGee, 107 0. G. 1376. 
The question of primary importance is not whether they 
were able to file their statements within the time fixed, but 
why they did not make a showing of the facts and ask relief 
at the proper time. 

Fowler v. Temple et al. v. Dyson v. McBerty, 107 0. G. 
543. 
A motion to extend time for filing preliminary statement 
must be for a definite time. Affidavit supporting it must 
be specific. 

Keech v. Birmingham, 1902 C. D. 473, 101 0. G. 2825. 
The declaration of interference and setting -of time for fil-. 
ing of preliminary statements is constructive notice that tes- 
timonv will be taken in a reasonable time. 

Davis V. Cody, 1902 C. D. 388, 101 0. G. 1369. 
Time for filing postponed by stipulation of counsel. 
Jones V. Greenleaf, 1879 C. D. 23, 15 0. G. 560. 
The attorney for the patentee refused to file their prelimi- 
nary statement till they should find out as much of their 



389 CERTIFIED COPIES. Rule 105 

opponent's invention (an applicant) as he had means of 
knowing of theirs. An extension of time was refused. 

Spalding & Aldrich v. Winchester, 1871 C. D. 94. 
A case that passes on the subject matter of this rule. 

110 0. G. 604. 

Rule 105. Certified Copies Used in Interference Pro- 
ceedings. » 

When an application is involved in an interference 
in which a part only of the invention is included in 
the issue, the applicant may file certified copies of 
the par^ or parts of the specification, claims, and 
drawings which cover the interfering matter, and 
such copies may be used in the proceeding in place of 
the original application. 

HISTORY. 
Rule 105 was introduced in 1888. 

CONSTRUCTIONS. 

Whether or not the copy filed is sufficient to enable one to 
understand the mode of operation of the device, is a matter 
which should be considered in the first instance by the Pri- 
mary Examiner who will fix a day upon which the parties 
mav be heard. 

" Kugele V. Blair, 135 0. G. 1350. 

In a motion for dissolution based upon the certified copy, 
it was assumed that such copy contained everything pertinent. 
Fagan v. Graybill, 121 0. G. 1013. 

Where a rejected claim is included in a certified copy, all 
actions relative thereto should be included in the copy. 
Pagan v. Graybill, 121 0. G. 1013. 

Where a party files a copy of portions of his application 
for use in interference proceedings, the question of sufficiency 
of the copy is a matter to be determined by the Primary 
Examiner in the first instance. A day should be fixed upon 
which the parties may be heard. 
Eiker v. Saw, 120 0. G. 2754. 

If the petitioners think that the disclosure made by the 
certified copies of the parts of the earlier case, filed by Can- 
field, is incomplete or insufficient as to the subject matter in- 
volved in this interference, they should bring the matter 



Rule 106 NEW APPLICATION. 390 

before the Primary Examiner who will determine the ques- 
tion in the first instance after a hearing of the parties. 

Eiker v. Law, 130 0. G. 2754; Kugele v. Blair, 125 0. 
G. 1350; Lewis v. Deulch v. Lum v. Murphy v. Can- 
field, 181 0. G. 265. 
The reason for the rule of secrecy would seem to apply in 
the case of patents issued upon divisional applications. 
Dyer, 106 0. G. 1508. 
Provides for concealing a clearly divisible invention, but 
does not provide for concealing any part of a divisible inven- 
tion in issue. 

Davis V. Ocompaugh v. Gerrett, 103 0. G. 1679. 
In a process application a claim having an additional step 
is a separate invention and may be reserved under the rule, 
the product is a part of the invention and may not be re- 
served. 

Powrie, 1902 C. D. 200-1, 99 0. G. 2549. 
If an application contains a description and claims of one 
or more inventions not related to the one in issue in such a 
manner as to afl'ect its scope or meaning, the opposing party 
should not be allowed to inspect this part of the application. 
Zweilusch v. Witteman, 75 0. G. 183. 
Rule 105 is in accordance with law. 

Smith & Thomas v. Cowles, 1885 C. D. 12, 30 0. G. 343. 
Cases that pass on the subject matter of this rule : 

Hall V. Dolmer, 189 0. G. 251; Shavir v. Dilg & Fowler, 
157 0. G. 1001 ; Bastian v. Champ, 128 0. G. 2837. 

Rule 106. New Application for Claims not in Inter- 
ference. 

When a part only of an application is involved in 
an interference, the applicant may withdraw from his 
application the subject matter adjudged not to inter- 
fere, and file a new application therefor, or he may 
file a divisional application for the subject matter 
involved, if the invention can be legitimately divided: 
Provided, That no claim shall be made in the appli- 
cation not involved in the interference broad enough 
to include matter claimed in the application involved 
therein. 



391 NEW APPLICATION. Rule 106 

CONSTRUCTIONS. 

A new application for claims in interference should be sus- 
pended to await that action. 

Wickers & Furling, 129 0. G. 2076. 

Claims suggested were made in a separate application. 
Though made before the interference was declared they were 
made in view of such interference and Rule 106 applies. 
Gueniffel, Benovit, and Mcault, 119 0. G. 338. 

Where a divisional application is filed for the purpose of 
interference with claims to the same specific form shown in 
the original case, though the claims in the divisional case 
are narrower than the claims in the original case, held that 
the original application will not be allowed until the contem- 
plated interference is terminated. 

Gueniffel, Benovit and Nicault, 119 6. G. 338. 

The rule was designed to apply especially to an interfer- 
ence between applicants, and for the purpose of preventing 
one party, going out before the world with a patent, showing 
perhaps the subject matter of a pending interference, and 
thereby leading the public to suppose that it was protected 
by said patent, to the great detriment, perhaps, of the other 
party contesting the claim. To some extent the provisos also 
apply in interference between an application and patent, for 
a portion of the claims in an interfering application ought 
not to be allowed, to go to patent under any circumstances, 
unless they are for separate inventions, or that, if the inter- 
ference should result in the grant of another patent to the 
same party, the two will be distinct from each other; but if 
as in this case, one party already has a patent, the grant of a 
patent of the later date to another party can work no damage 
to the first patentee, even though it show the subject matter 
of the interference; especially if the second patent is subor- 
dinate to the one already in existence, which is the fact in 
this case. 

Lacroix & Welch, 1873 C. D. 166. 

Questions properly considered in an interference will not be 
considered in a separate application. 

Robinson, 1902 C. D. 433, 101 0. G. 2079. 

No proper line of division between an element and its com- 
bination. 

Porter v. Louden, 73 0. G. 155. 

An applicant can only be allowed such claims in a separate 
application as can not be included in the interference by the 
other party under Rule 94. 

Wheeler, 1883 C. D. 12, 23 0. G. 1031. 



Rule 107 DISCLAIMER. 392 

But only when the -claims so withdrawn cover inventions 
which do not involve the device in manufacture. 
Hermance v. Bussey, 1871 C. D. 216. 
Cases that pass on the subject matter of this rule : 

Phillips V. Sensenich, 122 0. G. 1047; Davis v. Garrett, 
123 0. G. 1991; Assignee, 121 0. G. 689; Hildreth, 
1901 C. D. 186, 97 0. G. 1374; Neiswanger, 1891 C. 
D. 37. 

Rule 107. Disclaimer to Avoid Interference. 

An applicant involved in an interference may, with 
the written consent of the assignee, when there has 
been an assignment, before the date fixed for the fil- 
ing of his preliminary statement (see E-nle 110), in 
order to avoid the continuance of the interference, 
disclaim under his own signature the invention of the 
particular matter in issue, and upon such disclaimer 
judgment shall be rendered against him. 

CONSTRUCTIONS. 

The statement of abandonment (Trade-Mark) was not so 
unequivocal and unconditional as required by the rules. The 
case is therefore remanded to the Examiner of Interferences 
with directions to vacate the judgment and resume proceed- 
ings. 

The Thomson Wood Finishing Co. v. Eenold Bros., 130 
0. G. 980. 
An ordinarv amendment is not sufficient under this rule. 

Colley V." Copenhaver, 107 0. G. 268. 
The rules nowhere provide for the termination of an inter- 
ference after it has once been declared on a mere cancella- 
tion of the claims. 

Eead v. Scott, 1902 C. D. 242, 100 0. G. 449. 
The cancellation of claims is not sufficient. 

Curtis V. Marsh, 1900 C. D. 127, 92 0. G. 1236. 
If one makes a broad claim covering two species and the 
other makes a narrow claim to one species there is an inter- 
ference which may be avoided by a disclaimer. 

Kenvon v. Carter, 1894 C. D. 2; Grimmett v. Willett, 
1894 C. D. 16. 
This rule does not require a party who has been defeated 
in an interference proceedings and has canceled the claims 



393 DiscLAiMEK. Rule 107 

which were in interference to file a disclaimer of the matter 
covered by such claims. 

Firm, 1887 C. D. 27, 39 0. G. 1199. 
Where the Office has been in error in the declaration of the 
interference or has put a wrong construction upon the appli- 
cant's claim, he is enabled by the provisions of this rule to 
extricate himself from the controversy by properly restricting 
his application to the invention he desires to claim. 
Drawbaugh v. Blake, 23 0. G. 1221. 
A disclaimer should be put in proper form to be incor- 
porated into the specification, and not as a preliminary state- 
ment. 

Laverty v. Flagg, 1879 G. D. 303, 16 0. G. 1141. 
Disclaimers must be as broad as the issue. Disclaiming 
the specific device claimed in opponents application will not 
extricate the disclaimant from an interference in which the 
issue is a general claim. 

Walsh V. Shinn, 1879 C. D. 279, 16 0. G. 1006. 
Parties can not stipulate patents into each others hands. 
Concessions of priority must be signed by the parties them- 
selves and not by their attorneys, though the acts of the 
attorneys may be ratified by a party accepting the result of 
such stipulation. 

Tucker v. Kahler, 1879 C. D. 71, 15 0. G. 966. 
An applicant will be estopped from claiming in a reissue 
matter which was disclaimed in the original application, in 
order to avoid an interference. But a disclaimer not proved 
to have been authorized by applicant can not have that effect. 
Lee V. Walsh, 1879 C. D. 29, 15 0. G. 563. 
There is nothing in the nature of interference proceedings 
or in the character of the rights to be determined which pre- 
cluded the application of the now well established doctrine 
of estoppel. 

Berry v. Stockwell, 1876 C. D. 47, 9 0. G. 404; Walker 
on Patents, sec. 141. . 
An admission of priority will not debar a patent to the 
disclaimant on a subsequent application. Ex parte J. W. 
Cochran, 1871 C. D. 78, to the contrary cited and said to 
have been overruled by the Supreme Court of the District. 
Allen & Moody v. Gilman, 1872 C. D. 204. 
See note to Rule 119. 
Cases that pass on the subject matter of this rule : 

Townsend v. Corey, 119 0. G. 2237; Krakaw v. Harding, 
107 0. G. 1662; Skinner v. Murray, 107 0. G. 542; 
Hildreth, 1901 C. D. 186, 97 O. G. 1374. 



Rule 108 Claims op paeties. 394 

Rule 108. Inspection of Claims of Opposing Parties. 

When applications are declared to be in interfer- 
ence, the interfering parties will be permitted to see 
or obtain copies of each other's file wrappers, and so 
much of their contents as relates to the interference, 
after the preliminary statements referred to in Rule 
110 have been received and approved; but informa- 
tion of an application will not be furnished by the 
office to an opposing party, except as provided in 
Rules 97 and 103, until after the approval of such 
statements. 

See note to Rule 105. 

CONSTRUCTIONS. 

jSTo appeal lies from decisions which could not be made a 
ground of rejection of a claim after the determination of the 
interference. 

Mortimer v. Thomas v. Brownson, 192 0. G. 215. 
Where application is void, unless it has the filing date of 
the previous application, the opponent may have copies of the 
pertinent part of said first application. 
Hall V. Polmer, 189 0. G. 251. 
An interference held to be properly dissolved because of an 
insufficient affidavit under Rule 75. 

Hidgkinson v. Roller, 185 0. G. 251. 
It was suggested that the party had lost her right to con- 
ceal any part of her invention, by reason of delay, but it was 
held that it did not appear to be her fault altogether and 
was not sustained. 

Harris v. Kennedy, 161 0. G. 530. 
A party is entitled to copies of the communications relating 
to the invention in issue. 

Harris v. Kennedy, 161 0. G. 530. 
If an application filed under Rule 106 is referred to, it 
may be inspected. 

Shaver v. Dilig and Fowler, 157 0. G. 1001. 
After an interference is decided the parties are not entitled 
to further inspect each others papers. 
Sirl, 138 0. G. 509. 



395 CLAIMS OP PAHTiES. EuIg 108 

Delay in filing an amendment in order to avoid inspection 
by the opposing party is not excusable. 

Dilge and Fowler, Jr., 132 0. G. 1837. 
An interference will not be suspended to secure the issuance 
of a patent on an application referred to but not included in 
the interference before the other party has access to the files. 
Field, 130 0. G. 1687. 
Where S requests copies of the decision of the Examiner 
upon a motion for dissolution in another interference in which 
F was a party and which is referred to in F's record, held 
that since S was not a party to the other interference and the 
claims forming the issue of that interference are not made by 
S, he should be denied access to the record of that interfer- 
ence even though the issue therefore is based upon the same 
structure as that upon which the claims in the present inter- 
ference are drawn. 

Slone V. Fessenden, 130 0. G. 1487. 
Copy of affidavit under Kule 75 refused. 

U. S. Standard Voting Machine Co., 130 0. G. 1486. 
Where one party to an interference shows, describes, and 
claims an auxiliary invention which is not essential to the 
operativeness of the invention in issue and the other party 
has presented no claim which includes this auxiliary inven- 
tion either broadly or specifically, there appears to be no rea- 
son why it should be disclosed to him. 
Kugele V. Blair, 137 0. G. 1253. 
A party who in a patent or in his testimony, refers to 
pending or an abandoned application, can not thereafter with- 
hold such application from the inspection of the opposite 
partv. (Authorities.) 

Belle City Malleable Iron Co., 125 0. G._1351. 
Ordinarily when an application involved in interference 
contains a statement that it is a division of an earlier appli- 
cation the earlier application is thrown open to the inspection 
of the opposing party, and no reason is apparent for making 
an exception in the present case. 

Steinmetz v. Thomas, 125 0. G. 1351. 
The attorneys of the assignee of the entire interest is en- 
titled to inspect papers. 

Cazin v. Von Welsbach, 119 0. G. 650. 
A copy of a previous application referred to in preliminary 
statement furnished opposing party. 

Claasen v. Steffen, 113 0. G. 2507. 
No good reason exists why a party to an interference should 
be permitted to examine papers relating to claims not in- 



Rule 108 CLAIMS OF PARTIES. 396 

volved in the interference, even though the party in whose 
interest the papers were filed happens to be a party to the 
interference. (Op. Att'y Gen.) 

Davis V. Garrett, 112 0. G. 1211. 
If' an applicant desires to avail himself of the date of his 
original application, the other party is entitled to see the 
original application. 

Henderson, 107 0. G. 1661. 
Eequests for copies of pending or abandoned applications 
referred to in patents should be supported by a showing of rea- 
sons why they are desired. 
Dyer, 106 0. G. 1508. 
The parties to an interference are entitled to see so much 
of their opponent's cases as relate to the interference. This 
includes a copy of the specification, claims, and all claims 
relating to the interfering matter. 

102 0. G. 228. 
and specifically public use proceedings. 
Mills V. Torrance, 106 0. G. 544. 
Affidavits under Eule 75 not disclosed, 

Davis Ocumpaugh v. Garrett, 103 0. G. 1679. 
A motion to have the preliminary statement sealed up until 
the expiration of the time limited for motions to dissolve 
refused because not contemplated by the rules. 

Whipple V. Sharp, 1902 C. D. 5, 98 0. G. 226. 
If a former application is referred to to fix a date, oppo- 
nent has a right to a copy of such application. 
Gillespie, 1900 C. D. 149, 92 0. G. 2159. 
After judgment of priority against applicant who makes a 
motion for dissolution and redeclaration of interference to 
include applicant's earlier application, the opposing party 
will be furnished with a copy of said earlier application. 
Thorpe v. White, 1900 C. D. 46, 91 0. G. 227. 
Contains nothing to authorize the disclosure of a caveat 
that may have been referred to during the ex parte con- 
sideration. 

Dowry, 1900 C. D. 1, 90 0. G. 445. 
Affidavits under Eule 75 may not be shown to opposing 
parties or copies furnished. 

Guiser, 1880 C. D. 94, 17 0. G. 507. 
The fact that the applicant has access to the specification 
and claims of the patentee is no reason why this rule should 
be violated by furnishing the patentee with a copy of the 
specification and claims of the applicant. 

Spalding and Aldrich v. Winchester, 1871 C. D. 94. 



397 iNVENTioisr in application. Rule 109 

Cases that pass on the subject matter of this rule. 
Kugele V. Blair, 125 0. G. 1350; Davis v. Garrett, 123 
0. G. 1991. 

Rule 109. Invention Shown, but not Claimed in Ap- 
plication. 

An applicant involved in an interference may, at 
any time within thirty days after the preliminary 
statements (referred to in Rule 110) of the parties 
have been received and approved, on motion duly 
made, as provided by Rule 153, file an amendment to 
his application containing any claims which in his 
opinion should be made the basis of interference be- 
tween himself and any of the other parties. Such 
motion must be accompanied by the proposed amend- 
ment, and when in proper form will be set for hear- 
ing before the law examiner. Where a party opposes 
the admission of such an amendment in view of prior 
patents or publications, full notice of such patents 
or publications must be given at least five days prior 
to the date of hearing. On the admission of such 
amendment, and the adoption of the claims by the 
other parties within a time specified by the law ex- 
aminer, the primary examiner shall redeclare the in- 
terference, or shall declare such other interferences 
as may be necessary to include the said claims. New 
preliminary statements will be received as to the 
added claims, but motions for dissolution with regard 
thereto will not be considered where the questions 
raised could have been disposed of in connection with 
the admission of the claims. Amendments to the 
specification will not be received during the pendency 
of the interference, without the consent of the Com- 
missioner, except as provided herein, and in Rule 106. 

Any party to an interference may bring a motion to 



Rule 109 i]srvENTioN iisr application. 398 

put in interference any claims already in his appli- 
cation or patent, which in his opinion should be made 
the basis of interference between himself and any of 
the other parties. Such motions are subject to the 
same conditions, and the procedure in connection 
therewith is the same, so far as applicable, as here- 
inabove set forth for motions to amend. 

HISTORY. 

Eule 109, previous to last revision, was as follows: An 
applicant involved in an interference may, at any time within 
thirty days after the preliminary statements (referred to in 
Eule 110) of the parties have been received and approved, 
on motion duly made, as provided by Eule 153, file an amend- 
ment to his application containing any claims which In his 
opinion should be made the basis of interference between him- 
self and any of the other parties. Such motion must be 
accompanied by the proposed amendment, and when in proper 
form will be transmitted by the Examiner of Interferences 
to the Primary Examiner for his determination. On the 
admission of such amendment, and the adoption of the claims 
by the other parties within a time specified by the Examiner, 
as in Eule 96, the interference will be redeclared, or other 
interferences will be declared to include the sam.e as may 
be necessary. ISTew preliminary statements will be received 
as to the added claims, but motions for dissolution will not 
be transmitted in regard thereto where the questions raised 
could have been disposed of in connection with the admission 
of the claims. Amendments to the specification will not be 
received during the pendency of the interference, without the 
consent of the Commissioner, except as provided herein, and 
in Eules 106 and 107. 

See Eule 94 of 1879. 

Present Eule 109 was promulgated in view of the decisions 
of the Court of Appeals of the District of Columbia in 
Blackford v. Wilder, 127 0. C. 2855, Horins v. Wends, 129 
0. Gr. 2858, in which the court refused to consider a second 
interference for the purpose of permitting applicants to pre- 
sent claims covering all the patentable subject matter common 
to the interfering applications. But the time for presentation 
must be confined to thirty days. 

Mattice v. Langworthy, 132 0. G. 678. 

See note to Eule 122. 



399 INVENTION IN APPLICATION, Rule 109 

CONSTRUCTIONS. 

Insertion of Claims. 

When some of the claims which are copied from a patent 
are found to be allowable, but others are not, the interference 
should be declared without waiting to determine the appli- 
cant's right to the remaining claims. If necessary applicant 
can bring up that question by motion under Eule 109. 
Weber and Woodford, 264 0. G. 863. 
In this case appellant did not comply with the rules of the 
Office and file an amendment containing these claims prior 
to the dissolution of the interference. We, therefore, agree 
with Patent Office that he was thereafter estopped to urge 
them. 

In re Copen, 214 0. G. 685 (see also page 683). 
A denial of a motion to insert claims, in opponent's appli- 
cation under Eule 96, not appealable. 

Stronach v. Shaw, 197 0. O. 989; Mortimer v. Thomas 
V. Brownson, 192 0. 0. 215. 
Unless the moving party is of the opinion that the claims 
are patentable, he can not move to insert them. 
Eich V. Porter v. Hamlin, 192 0. 0. 1261. 
Patentability should be determined under the motion to 
amend. If not, a motion to dissolve not permitted. 

Henderson & Cantley v. Kindervaler, 192 0. O. 741. 
An amendment to the drawing which is to cure an obvious 
clerical mistake, might be made during an interference. 

Moore, Com., v. IT. S. ex rel. Colburn Machine Glass 
Co., 191 0. G. 293. 
A motion to insert claims is inconsistent with a motion to 
dissolve an interference on the ground of nonpatentability of 
such claims. 

Weinberg v. Boyer v. Eussell and Eussell, 185 0. G. 249. 
After interference had been appealed E presented claims by 
an amendment and asked an interference with another patent 
of C's. Primary Examiner should consider whether a second 
interference should be instituted, but if not, the amendment 
should await termination of the present one. 
Crers v. Euby, etc., 184 0. G. 552. 
The junior party being in default transmission was refused 
of a motion by the senior party to include certain counts. 
Crone v. "White, 181 0. G. 1074. 
The purpose is to permit all questions to be determined in 
one interference. It is the interest of the parties to have the 
issue corrected before taking testimony. 
Kurowski v. Eansey, 181 0. G. 820. 



Rule 109 INVENTION IN APPLICATION. 400 

•Practice under Niedich, 172 0. G. 551. 

Where a disclaimer is filed, permission for the opposing 
party to inspect papers will not be given, even if the wishes 
to see if other claims can not be made under the provision 
of Eule 109. 

Hick, 172 0. G. 261. 

A specific claim allowed the successful party in an inter- 
ference involving generic claims. 
Van Gox, 170 0. G. 243. 

It is claimed that new light has been thrown upon the 
real invention which is at issue between the parties by the 
hearings which have been had before the Primary Examiner 
on the merits of the conflicting inventions. There is reason 
to believe that the original invention was not properly defined 
originally, and that it might be more clearly defined. The 
delay warranted and transmission of the motion ordered. 
Walker et al. v. Gilchrist, 164 0. G. 507-8. 

The purpose of this rule is to settled all preliminary ques- 
tions relating to the issue of an interference in a single pro- 
ceeding and the Examiner should decide under such circum- 
stances not only the question of dissolution of the interference, 
but also the questions raised by the claims presented under 
Eule 109, in order that all these questions may be reviewed, 
if necessary, by the appellate tribunal upon the same appeal. 
The fact that the decision of the Examiner dissolved the 
interference upon the issues originally set forth does not 
preclude the right to inter partes consideration of the claims 
presented under Eule 109. 

Hammond and Donahue v. Colley v. Norris, 148 0. G. 
573. 

The requirement as a condition precedent to transmission 
that applicant point out the elements of the claim in tiie 
application approved. 

Hock V. McCaskey v. Hopkins,. 141 0. G. 1161. 

Where an Examiner rejects claims presented by a party to 
an interference under Eule 109, he should set a limit of 
appeal from his decision whether the claims had been allowed 
to the other party or had been made for the first time by the 
moving party. 

Mattice v. Langworthy, 132 0. G. 1073. 

In the case of Townsend v. Copeland v. Eobinson, 126 0. 
G. 1355, it was pointed , out that the practice on motions 
under Eule 109 should follow the practice under Eule 124. 
Josleyn v. Hirlse, 132 0. G. 844. 

It is not intended to permit a party to present claims and 



401 INVENTION IN APPLICATION. Rule 109 

if they are not acceptable to amend them and thns enter upon 
a regular prosecution of the case before the Examiner, nor is 
it intended to permit an applicant to present his proposed 
claims in a piecemeal manner. 

Mattice v. Langworthy, 132 0. G. 678. 
This is not properly a motion under Eule 109, since the 
proposed claims are not claims of the Becker application, but 
is brought under the practice announced in Churchward v. 
Douglas V. Cutler, 106 0. G. 2016. It is necessary for inter- 
ferants to include in the one interference all matter that could 
have been presented and determined therein. 

The above case and Becker v. Otis, 129 0. G. 1267. 
(Eule adopted previous to Eule 96.) 
In view* of the transmission of the portion of the motion 
based on Eule 109 the transmission of the remainder of the 
motion will not occasion additional delay. 
Baslain v. Champ, 128 0. G. 2837. 
In view of the transmission of the portion of the motion 
based on Eule 109, the transmission of the remainder of the 
motion will not occasion additional delay. 
Bastian v. Champ, 128 0. G. 2837. 

Harnisch v. GurniflSt, Benoit and Wicault, 128 0. G. 455. 
The fact that one was unable to get the papers from the 
Patent Office until three days prior to the expiration of the 
time limited, considered a sufficient excuse for not filing mo- 
tion within such time. 

Kugele V. Blair, 125 0. G. 1350. 
See note to Eule 122. 

Townsend v. Copeland v. Eobinson, 124 0. G. 1545. 
The purpose of Eule 109 is clearly to avoid a second inter- 
ference, and where a party fails to take advantage of that rule 
he loses the right to contest the question of priority as to the 
claims made by his opponent. 

Ex parte Sulton, Steele, and Steele, 121 0. G. 1012. 
Substance and not words is the test of conflicting claims. 
Upton, 27 0. G. 99; Drawbaugh v. Blake, 1883 C. D. 17, 
23 0. G. 1221. 
It is the general spirit of the practice of the Office as well 
as of the courts to all questions that can fairly be considered 
at the same time should be so considered. Therefore, where 
U brought a motion to dissolve for lack of interference in 
fact and B moved to amend under Eule 109, it was error 
for the Examiner to refuse to entertain B's motion on the 
ground that his decision thereon would depend on the deter- 
mination of U's motion on appeal. 

Ubelacker v. Brill, 1899 C. D. 118, 87 0. G. 1783. 



Rule 109 INVENTION IN APPLICATION. 402 

It is recognized in the Office practice as desirable that the 
question of priority of invention as to all matters which may 
come in issne between the parties be settled in one interfer- 
ence proceeding and this is the purpose of Eule 109, but the 
mere possibility that other claims may be made by the parties 
and new controversies may arise is no justification for dis- 
solving an interference already in progress. 

Annand v. Spalckhaver, 1901 C. D. 234, 97 0. G. 2741. 
This rule does not provide for the insertion of claims sug- 
gested by counsel for both parties after consultation before 
filing a preliminary statement or taking testimony. Case re- 
manded to Primary Examiner for the purpose of considera- 
tion of such an amendment, under the general supervisory 
power of the Commissioner — Eule 213. 

Eeece v. Fenwick, 1902 C. D. 145, 99 0. G. 669. 
A motion pending under this rule is not a bar to a motion 
under Eule 122, nor does it excuse delay. 

Perrussel v. Wichmann, 1902 C. D. 228, 99 0. G. 2970. 
A motion to reopen interference for the purpose of intro- 
ducing further evidence must be accompanied bv good reasons. 
Shaffer v. Dolar, 1902 C. D. 344, 100 6. C. 3012-13; 
Harris v. Stern & Lotz, 1902 C. D. 386, 101 0. C. 
1132-33. 
The statement that the Examiner will redeclare the inter- 
ference should be taken to mean that he will amend the 
declaration by adding a new count. It is a reformation or 
amendment and not a new declaration. 
Mitchell V. Fitts, 103 0. G. 1915. 
A third interference is refused. 

Sarfert v. Meyer, 109 0. G. 1885. 
Twelve to fifteen days after receiving papers not unreason- 
able. 

Connell v. Tobey, 110 0. G. 2015. 
As held in the case of Jenne v. Brown v. Booth, 59 0. G. 
157, 78 C. D. 1842, any or all the motions provided for in 
Eule 122 may be brought in connection with the new claims 
included in the interference under the provisions of Eule 109 
and therefore Pfingst's motion as to the new counts was a 
proper one. 

Pfingst V. Anderson, 114 0. G. 264. 
A refusal to admit claims under this rule because they are 
not patentable should be reviewed, if at all, in the first in- 
stance by the Examiners-in-Chief. 
Limp V. Ball, 115 0. G. 249. 
It is contemplated by Eule 94 that the claims made in either 
application may be introduced into the other application by 



403 INVENTION IN APPLICATION. Rule 109 

amendment, and included in the interference upon motion 
made in accordance with that rule. 
Wheeler, 23 0. G. 1031. 
It is within the judicial discretion of the Examiner of In- 
terferences to extend the time for motion. 
House V. Butler, 1893 C. D. 14. 
May not introduce matter not warranted by application as 
originally filed. 

Grinnell v. Buell, 89 0. G. 1863; Smith v. Carmichael, 
93 0. G. 1123. 
A person making a specific claim only can not insert a 
generic claim when in the meantime another applicant has 
applied for another species. 

Bechman v. Wood, 89 0. G. 2459-62. See, however, 
McBerty v. Cook, 90 0. G. 2295. 
Contemplates the possibility of an allowance by the Ex- 
aminer upon argument of claims which were for some reason 
not suggested under Eule 96. 

Davis X. Ocumpaugh v. Garett, 103 0. G. 1679. 
Matters under this rule must come in the first instance 
before the Examiner of Interferences. If no claim is sought 
to be inserted the motion is unauthorized. Only matter con- 
templated by Kules 106, 107 and 109 may. be included in an 
amendment during the continuance of an interference. 
Smith V. Carmichael, 93 0. G. 1123. 
It is not within the province of the Examiner of Interfer- 
ences to consider the patentability or nonpatentability of the 
claims. This is so even if the proposed claims have been 
once rejected by the Primary Examiner. Applicant has a 
right to appeal. The purpose of this rule is to have counts 
added on motion of applicant if proper. 
Reece v. Fenwick, 97 0. G. 188. 
This rule does not provide for the insertion of claims sug- 
gested by counsel for both parties after consultation before 
filing a preliminary statement or taking testimony. Case 
remanded to Primary Examiner for the purpose of considera- 
tion of such an amendment under the general supervisory 
power of the Commissioner. Rule 213. 
Reece v. Fenwick, 99 0. G. 669. 
It is held that where a party promptly presents claims as 
proposed additional counts to the interference issue they 
should be considered by the Primary Examiner. The claims 
should be accompanied by a motion similar to that ordinarily 
presented under Rule 109 and by a motion before the Primary 
Examiner to transmit. Practice indicated. 
Churchward v, Douglas, 106 0. G. 2016. 



Rule 109 INVENTION IN APPLICATION. 404 

Tyden presented a claim in an amendment which was prop- 
erly a second species which could not on that account be 
entered. This decision of the Examiner should only have 
been made after notice to the other party. 

Tyden's divisional application should be considered and if 
there is interfering subject matter, an interference should be 
declared accordingly. 

Myers v. Tyden, 108 0. G. 287. 
Claims contained in a year old patent to one of the parties 
refused admission in view of the fact that the testimony was 
nearly complete. 

Newell V. Hubbard, 108 0. G. 1053. 
Practice prescribed where one of two interfering applicants 
wishes to file an amendment purporting to put the applica- 
tion in shape for another interference. 

Moore v. Hewitt v. Potter, 115 0. G. 509. 
Where a party considers that a claim of his opponent could 
be made by him under Eule 109, but believes that the claim 
is so vague and indefinite that proper determination of the 
question of priority could not be based thereon, held that the 
party should not ask the Office to make this claim an issue 
but should suggest some issue which would properly describe 
the invention. 

Wickers & Furlong v. Weinman, 118 0. G. 1797. 
P ofiEers no new claim at this time though it would seem 
that from the inspection of these applications he might readily 
have formulated and presented by motion in analogy to mo- 
tion under Eule 109 the broader allowable and interfering 
claims, which should, in his. opinion, be included in the issue, 
if any such claim could be drawn. 

Phelps V. Warmley v. McCuUough, 118 0. G. 1069. 
A motion to amend the issue of an interference under Eule 
109 was properly refused transmission where it contained a 
proviso that the claims shall be added "without prejudice to 
the right to contest such claims under the provisions of Eule 
122.^' 

Wheeler v. Palmros, 133 0. G. 230. 
Cases that pass on the subject matter of this rule: 

Hick, 172 0. G. 261; Brown v. Inwood and Lavenberg, 
130 0. G. 978; Kugele v. Blair, 127 0. G. 1253; Corey 
V. Eiseman & Misar, 122 0. G. 2063; Pagan v. Gray- 
bill, 121 0. G. 1013 ; Hicks v. Costello, 103 0. G. 1163 ; 
Berry v. Pitzsimmons, 1902 C. D. 153, 99 0. G. 862; 
Hildreth, 1901 C. D. 186, 97 0. G. 1374; Jenne v. 
Brown v. Booth, 1892 C. D. 78. 



405 PRELIMHSTAEY STATEMENTS. Rule 110 

Rule 110. Preliminary Statements. 

Each party to the interference will be required to 
file a concise preliminary statement, under oath, on 
or before a date to be fixed by the office, showing the 
following facts: 

(a) The date of original conception of the invention 
set forth in the declaration of interference. 

{h) The date upon which the first drawing of the 
invention and the date upon which the first written 
description of the invention were made. 

(c) The date upon which the invention was first 
disclosed to others. 

(d) The date of the reduction to practice of the in- 
vention. 

(e)A statement showing the extent of use of the 
invention. 

(/) The applicant shall state the date and number 
of any application for the same invention filed within 
twelve months before the filing date in the United 
States, in any foreign country adhering to the Inter- 
national Convention for the Protection of Industrial- 
Property or having similar treaty relations with the 
United States. 

If a drawing has not been made, or if a written de- 
scription of the invention has not been made, or if the 
invention has not been reduced to practice or disclosed 
to others or used to any extent, the statement must 
specifically disclose these facts. 

When the invention was made abroad the statement 
should set forth: 

(a) That the applicant made the invention set forth 
in the declaration of interference. 

(h) Whether or not the invention was ever pat- 
ented ; if so, when and where, giving the date and num- 



Rule 110 PEELIMINAIiY STATEMENTS. 406 

ber of each patent, the date of publication, and the 
date of sealing thereof. 

(c) Whether or not the invention was ever described 
in a printed publication; if so, when and where, giv- 
ing the title, place, and date of such publication. 

(d) When the invention was introduced into this 
country, giving the circumstances with the dates con- 
nected therewith which are relied upon to establish 
the fact. 

The preliminary statements should be carefully pre- 
pared, as the parties will be strictly held in their 
proofs to the dates set up therein. 

If a party prove any date earlier than alleged in his 
preliminary statement, such proof will be held to es- 
tablish the date alleged and none other. 

The statement must be sealed up before filing (to be 
opened only by the examiner of interferences; see 
Rule 111), and the name of the party filing it, the title 
of the case, and the subject of the invention indicated 
on i^e envelope. The envelope should contain noth- 
ing but this statement. 

(For forms, see 36 and 37, appendix.) 

HISTORY. 

1869. ISTo Similar Eule. 

1870. Eule 53, See Appendix. 

In 1871, Eule 53 read as follows: Before the declaration 
of an interference proper a preliminary interference will be 
declared, in which each party, without the name of the other 
party being made known to him, will be required to file a 
statement under oath giving a detailed history of the inven- 
tion, describing its original conception, the successive experi- 
ments, the extent and character of use, and the various forms 
of embodiment, and giving, so far as practicable, the exact 
dates of each step in its development. This statement must 
be sealed up before filing (to be opened only by the examiner 
; of interference), and the name of the party filing it and the 
subject of the invention indicated on the envelope. 



407 PRELIMINAEY STATEMENTS. Rule 110 

These preliminary statements shall not be opened to in- 
spection of the opposing parties until both have been filed 
or until the time for filing both has expired, nor then, until 
they have been examined by the proper officer and found to be 
sufficiently definite as regards their declarations of dates. 

If the party upon whom rests the burden of proof fails to 
file a preliminary statement, or if his statement fails to 
overcome the prima lacie case made by the respective dates 
of application, or if it shows that lie has abandoned his in- 
vention, or that it has been in public use more than two 
years before his application, the other party will be entitled 
to an immediate adjudication of the case upon the record; 
unless a presumption is created that his right to a patent is 
affected by the alleged -public use of the invention, in which 
case the interference may be proceeded Avith. 

If the earlier applicant fails to file a preliminary statement, 
no testimony will subsequently be received from him going 
to prove that he made the invention at a date prior to his 
application. The preliminary statement can in no case be 
used as evidence in behalf of the party making it. Its use 
is to determine whether the interference shall be proceeded 
with, and to serve as a basis of cross-examination for, the 
other party. 

If either party requires a postponement of the time for 
filing the preliminary statements, he must present his reason 
therefor, in the form of an affidavit, prior to the day pre- 
viously fixed upon. 

» In 1873, Eule 53 read as follows : Before the declaration 
of an interference proper a preliminary interference will be 
declared, in which the primary examiner will notify the re- 
spective parties when the applications of the other parties 
were filed, together with their names and residences. Each 
party to the interference will be required to file a statement 
under oath, giving a detailed history of the invention, show- 
ing the date of the original conception, and the date that the 
invention was reduced to drawings or model, and the date 
of its completion, and the extent and character of use. The 
parties will be strictly held in their proof to the dates set 
up in their preliminary statements. This statement must 
be sealed up before filing (to be opened only by the examiner 
of interference), and the name of the party filing it and the 
subject of the invention indicated on the envelope. 

These statements shall not be open to the inspection of the 
opposing parties until both have been filed, or until the time 
for filing both has expired, nor then, until they have been 



Rule 110 PRELIMIISrAEY STATEMENTS. 408 

examined by the proper officer and found to be satisfactory. 
At the time of the examination of the preliminary statements 
the examiner of interferences will also make an examination 
of the preliminary declaration (instituted by the primary ex- 
aminer), in order to ascertain whether or not the issue be- 
tween the parties has been clearly defined. If it is found, 
upon such examination, that the preliminary declaration is 
ambiguous in this particular, the interference will be sus- 
pended and the case returned to the primary examiner for 
amendment. 

If the party upon whom rests the burden of proof fails to 
file a preliminary statement, or if his statement fails to over- 
come the prima-facie case made by the respective dates of 
application, or if it shows that he has abandoned his inven- 
tion, or that it has been in public use more than two years 
before his application, the other party will be entitled to an 
immediate adjudication of the case upon the record, unless a 
presumption is created that his right to a patent is affected 
by the alleged public use of the invention, in which case 
the interference may be proceeded with. 

If the earlier applicant fails to file a preliminary statement, 
no ,testimony will subsequently be received from him going 
to prove that he made the invention at a date prior to his 
application. The preliminary statement can in no case be 
used as evidence in behalf of the party making it. Its use 
is to determine whether the interference shall be proceeded 
with, and to serve as a basis of cross-examination for the 
other party. » 

If either party requires a postponement of the time for 
filing the preliminary statements, he must present his rea- 
sons therefor, in the form of an affidavit, prior to the day 
previously fixed upon. 

In 1878, Eule 53 read as follows: Before the declaration 
of an interference proper a preliminary interference will be 
declared, in which the primary examiner will briefly and 
concisely define the interfering subject-matter, and specify 
the claims embracing the same, and also notify the respective 
parties when the applications of the other parties were filed, 
together with their names and residences. * . * * 

If the party upon whom rests the burden of proof fails 
to file a preliminary statement, or if his statement fails to 
overcome the prima-facie case made by the respective dates 
of application, the other party will be entitled to an im- 
mediate adjudication of the case upon the record. Or where 
there are more than two parties to the interference, and any 



409 PRELIMINARY STATEMENTS. Rule 110 

of them fail to file a preliminary statement, judgment may 
be rendered against such parties and the interference proceed 
between the remaining parties. * * * 

In ease of material error in the preliminary statement, 
arising through inadvertence or mistake, it may be corrected, 
upon showing to the satisfaction of the Commissioner that 
its correction is essential to the ends of justice. 

The motion to correct the said statement must be made 
before the taking of the testimony relating to the alleged 
error, and as soon as practicable after the discovery thereof, 
and it must be accompanied by notice to the adverse party or 
parties. 

Eule 105 of 1879 in appendix: In 1885 the words, "of 
the making of a drawing, of the making of a model" appear 
in lines 3 and 4, and the words "reduction to practice" ap- 
pear in line 5 and the following matter was added to the Eule 
of 1879. 

When the invention was made abroad the statement should 
set forth when and where, if ever, the invention was patented 
(giving the date and number of the patent), and when, if 
ever, it was described in a printed publication (giving the 
date and place of publication), and when, if ever, it was 
introduced, or knowledge of it was introduced into this 
country (giving the circumstances which are thought to es- 
tablish" the fact thereof). 

In the general revision of 1888, Eule 110 reads: Each 
party to the interference will be required to file a concise 
statement, under oath, on or before a date to be fixed by the 
office, showing the following facts : 

(1) The date of original conception of the invention set 
forth in the declaration of interference. 

(2) The date upon which a drawing of the invention was 
made. 

(3) The date upon which a model of the invention was 
made. 

(4) The date upon which the invention was first disclosed 
to others. 

(5) The date of the reduction to practice of the invention. 

(6) A statement showing the extent of use of the invention. 

If a drawing or model has not been made, or if the inven- 
tion has not been reduced to practice or disclosed to others 
or used to any extent, the statement must specifically disclose 
these facts. 

When the invention was made abroad the statement should 
set forth : 



Rule 110 PEELIMIJSTAEY STATEMENTS. 410 

(1) That applicant made the invention set forth in the 
declaration of interference. 

(2) Whether or not the invention was ever patented, if so, 
when and where, giving the date and number of each 
patent. 

(3) Whether or not the invention was ever described in a 
printed publication, if so, when and where, giving the 
title, place, and date of such publication. 

(4) Whether or not the invention was ever introduced into 
this country, if so, giving the circumstances, with the 
dates connected therewith, which are relied upon to 
establish the fact. 

The preliminary statements should be carefully prepared, 
as the parties will be strictly held in their proofs to the 
dates set up therein. 

The statement must be sealed up before filing (to be opened 
only by the examiner of interferences, see Eule 111), and the 
name of the party filing it, the title of the case, and the 
subject of the invention indicated on the envelope. The 
envelope should contain nothing but this statement. 

In 1899 the words "the date of publication, and the date 
of sealing thereof" appear in the second numbered paragraph 
relating to inventions made abroad, and the following para- 
graph followed the caution that care should be used: 

If a party prove any date earlier than alleged in his pre- 
liminary statement, such proof will be held to establish the 
date alleged and no other. 

110 (7) (Added June 34, 1903.) The applicant shall 
state the date and number of any application for the same 
invention fixed within twelve (12) months before the filing 
date in the United States in any foreign country adhering 
to the international convention for the protection of industrial 
property or having similar treaty relations with the United 
States. 

The requirement that the date of the first written descrip- 
tion must be stated was added in the last revision. 

CONSTRUCTIONS. 

(1) In General. 

(2) As A Pleading. 

(3) Effect of Preliminary Statement. 

(4) Inaccuracy — Variation in Proof. 

(5) Reduction to Practice. 

(6) Eeduction to Practice Indicated by Utility and 

Operativeness. 

(7) Diligence in Eeducing to Practice. 



411 PRELIMIN^ARY STATEMENTS. Rule 110 

(8) Model as a Eeduction to Practice. 

(9) Extent of Use. 

(10) Conception of Invention. 

(11) Disclosuee of Invention. 

(12) Additional Cases. 

(1) In General. 

There seems to be a tendency to approximate the practice 
in patent cases under Equity Eule 58 to the Office practice 
in interference cases. 

The rule requiring preliminary statements is a salutary 
one, its obvious object being to illicit from each of the parties 
certain vital information before any party is informed as to 
the statements of any other. 

Thomas v. Weintraub, 177 0. G. 772. 
A preliminary statement given the effect of an affidavit 
under Eule 75. (Perhaps this was in view of the particular 
circumstances of the case.) 

Eorsyth v. Eichards, 1905 C. D. 115, 115 0. G. 1327. 
Question if a disclosure to a wife is a disclosure within the 
meaning of the Patent Law. 

Harter v. Barrett, 1905 C. D. 578, 114 0. G. 975; 24 
App. D. C. 300. 
Does not prohibit party's attorney from administering the 
oath. 

Bundy v. Eumbarger, 1900 C. D. 94, 90 0. G. 2210. 
After judgment on the record the defeated party may not 
examine the preliminary statement of his opponents. 
Lindsay v. McDonough, 1891 C. D. 89. 
Preliminary statements considered in connection with pre- 
viouslv filed affidavit under Eule 75. 

Schmertz v. Appert, 1890 C. D. 95, 77 0. G. 1784. 
After judgment on the record permission to inspect the 
preliminary statement of the prevailing party refused. 

Lindsay v. McDonough, 1891 C. D. 98, 66 0. G. 1402. 
If there is any doubt as to the scope of the interference 
issue, each applicant should confine his preliminary statement 
to the invention contained in the claims of his application 
which are declared to be involved in the interference and not 
attempt to frame the statement to cover two or more possible 
constructions of the issue. 

Haug V. DuBois, 1891 C. D. 131, 54 0. G. 1061. 
The disclaimer authorized by Eule 104 can not be received 
as a preliminary statement. 

Laverly v.'Plagg, 1879 C. D. 303, 16 0. G. 1141. 



Rule 110 PRELIMIlSrARY STATEMENT. 412 

(2) As a Pleading. 

The sworn preliminary statements required when an inter- 
ference has been declared constitute the pleadings of the par- 
ties, and we have had occasion several times and for reasons 
satisfactory now as then, to approve the practice of holding 
parties strictly to the dates given therein. 

Parkes v. Lewis, 1906 a D. 735, 123 0. G. 2313, 18 App. 

D. C. 1; Lnger v. Browning, 1903 C. D. 593, 104 0. 

G. 1123, 21 App. D. C. 201; Podlesak & Podlesak v. 

Mclnnerney, 1906 C. D. 558, 120 0. G. 2127, 26 App. 

D. C. 399"; Adams, 1905 C. D., 114 0. G. 2093, 24 

App. D. C. 275; See Berger v. Dodge, 1905 C. D. 603, 

114 0. G. 2383, 24 App. D. C. 481; Eobinson v. Cope- 
land, 1904 C. D. 664, 112 0. G. 501, 24 App. C. C. 68; 
Paul V. Johnson, 1904 C. D. 610, 109 0. G. 807, 23 
App. D. C. 194; Bader v. Vagen, 1899 C. D. 1235, 
87 0. G. 329, 14 App. D. C. 241 ; Stevens v. Seher, 
1897 C. D. 761, 81 0. G. 1932, 11 App. D. C. 245; 
Cross V. Phillips, 1899 C. D. 342, 87 0. G. 1399, 14 
App. D. C. 230; Hammond v. Basch, 1905 C. D. 615, 

115 0. G. 804, 24 App. D. C. 469; Fowler v. Boyce, 
1906 C. D. 659, 122 0. G. 1726, 27 App. D. C. 4852. 

Preliminary statement in the nature of a pleading. 
Huber v. Aiken, 1899 C. D. 166, 88 0. G. 1525. 
Preliminary statements in interferences do not make the 
issue between parties and therefore they are not like pleadings 
in courts. 

Woodward v. Kennedy, 1903 C. D. 166, 104 0. G. 1393. 

The practice of requiring a preliminary statement approved. 

It is in the nature of a pleading. "Whether each statement 

is to be considered as a pleading in the case seems to me 

is not verv material." 

Hopkins V. LaEoy, 1880 C. D. 188, 18 0. G. 859; Guest 
V. Finch, 1876 C. D. 144, 10 0. G. 165; Schenck v. 
Eider, 1870 C. D. 135. 
The rule that the proof and pleading must correspond is as 
applicable in the Office as in the courts. 

Young V. Eogers, 1880 C. D. 178, 18 0. G. 733. 
The failure to make objection by the contestant operates to 
cure a defect in a preliminary statement so far as he is con- 
cerned, in analogy to the rules of pleading. 

White V. Farmer, 1874 C. D. 19, 5 0. G. 338. 



413 PRELIMIISrAKY STATEMENT. RuIg 110 

(3) Effect of Preliminary Statement. 

Can applicant go back of the dates alleged in his pre- 
liminary statement in a bill in equity under E. S. 4915? 
See Greenwood v. Dover, 194 F. E. 95. 

It is well settled that a party to an interference is bound 
by the allegations of his preliminary statement. (123 0. G. 
1665, 133 0. G. 1736, 115 0. G. 804, 87 0. G. 1399.) 
Phillips V. Sensenich, 133 0. G. 677. 

The appellee contends that the allegation in the preliminary 
statement of B to the effect that he constructed an experi- 
mental machine in January, 1901, does not amount to an 
allegation of a reduction to practice, and hence, in respect of 
that machine and the two other machines thereafter con- 
structed, to which no date is given, limits B to the date of 
his application as his first reduction to practice. We can not 
concur in this view of the effect of the statement. It is not 
so precise as it might have been and if exception had been 
taken to it on that ground, in limine its amendment might 
possibly have been compelled; at any rate, if unamended, 
after exception, the limitations of its averments now insisted 
upon might reasonably be imposed. 

Burson v. Vogil, 1907 C. D., 131 0. G. 943. 

Unfortunately for them, under the rules of the Patent Office 
they are bound by the allegations of their preliminary state- 
ment that they did not reduce to practice the invention of 
the subject matter of this count until September, 1900. 

Lowrie v. Taylor, 1906 C. D. 713, 133 0. G. 1665, 37 
App. D. C. 533. 

No evidence of conception prior to the date alleged could 
have been considered. (Cases cited.) 

Neth & Tamplin v. Ohmer, 1906 C. D. 693, 133 0. G. 
998, 37 App. D. C. 319. 

F was refused permission to file an amended statement and 
in proceedings such as these we do not think that even con- 
sent of counsel, unless expressly approved by the Commissioner 
of Patents, warrants ignoring a rule of the Office that parties 
are limited to the dates set out in their preliminary state- 
ments, especially where leave has been asked and refused to 
permit the filing of an amended preliminary statement. Cases 
may often arise where the interest of the parties and the pub- 
lic will be best subserved by permitting dates earlier than set 
forth in preliminary statements to be proven. It should. 



Rule 110 PRELJMINARY STATEMENT. 414 

however, be done under the supervision of and with the 
approval of the Office. 

Fowler v. Boyce, 1906 C. D. 659, 122 0. G. 1726, 27 
App. D. C. 48-55. 
Where a party in order to prevail depends upon earlier 
dates than those alleged in his preliminary statement and per- 
mission to amend the statement to set out said earlier dates has 
been refused the testimony relating to such earlier dates must 
be disresrarded. 

Fowler v. McBerty, 1906 C. D. 585, 121 0. G. 1015, 27 
App. D. C. 41. 
The meaning of words used in a preliminary statement 
must be ascertained at affiant's peril. 

Dunn V. Halliday, 1905 C. D. 510, 119 0. G. 1261. 
It is essential in interference proceedings that preliminary 
statements made by the respective parties without knowledge 
of their opponents' cases should not be disregarded where the 
proofs are taken. 

Fowler v. Boyce, 1905 C. D. 615, 118 0. G. 2534, App. 
D. C. 48-55. 
We have had occasion several times and for reasons satis- 
factory now as then, to approve the practice of holding the 
parties strictly to the dates given therein. (Bader v. Vajen, 
14 App. D. C. 254; Stevens v. Seher, 11 App. D. C. 251; 
Cross V. Phillips, 14 App. D. C. 236.) 

Hammond v. Basch, 115 0. G. 804, 24 App. D. C. 469, 
Eule 110 and many published decisions have contained spe- 
cific warnings to applicants that the statements must be care- 
fully prepared and therefore there is no excuse for negligence 
in their preparation. 

Woodward v. Kennedy, 1903 C. D. 166, 104 0. G. 1394. 
The rule that one is bound by the statements in his pre- 
liminary statement applies only to the proceedings in which 
the parties are involved. 

Sievert v. Shuman, 1896 C. D. 47, 76 0. G. 1714. 
An allegation that the invention was reduced to practice in 
part at a certain date, held to limit affiant. 

Carty v. Kellog, 1895 C. D. 83, 73 0. G. 285, 7 App. 

D. C. 542. 
Warnant v. Warnant, 1880 C. D. 36, 17 0. G. 265. 
An applicant is not permitted to carry his invention back 
of the date set up in his preliminary statement. 
Hunt V. King, 1880 C. D. 22, i7 0. G. 200. 
The preliminary statement goes for nothing as affirmative 
Droof of the date of or fact of invention. 

Lauder v. Crowell, 1879 C. D. 177, 16 0. G. 405. 
The proof of the date of invention may be extended for- 



415 PEELIMINARY STATEMENT. Rule 110 

ward but not backward from the date fixed in the preliminary 
statement. 

Connor v. Williams, 1878 C. D. 137, 15 0. G. 387. 
Evidence tending to show a date of invention earlier than 
that put down in the preliminary statement should be dis- 
regarded. 

Hovey v. Hufeland, 1873 C. D. 329, 2 0. G. 493. 
The testimony should be restricted to a substantial adher- 
ence to the date of invention set up in the preliminary state- 
ment. 

Walpuski V. Jacobsen & Faber, 1876 C. D. 114, 9 0. G. 
964. 
The preliminary statement is conclusive against the party 
filing it, but can not be used as evidence against the adverse 
party. 

Kenyen v. Wesson, 1871 C. D. 91; Schenck v. Eider, 
1870 C. D. 135; Anson v. Woodburj^, 1877 C. D. 49, 
13 0. G. 1. 

(4) Inaccuracy — Variation in Proof. 

The looseness of assertion in the statement is inexcusable 
and tends to discredit him. (La Flare v. Chase, 74 0. G. 
1735; Shafer v. Dolan, decided June 5, 1904.) 

Blackman v. Alexander, 1903 C. D. 531, 113 0. G. 1703. 

That a device alleged to be a model was in fact a reduction 
to practice is a variation that will not be permitted. 

Basch V. Hammond, 1904 C. D. 474, 113 0. G. 552. 

The allegations of M in his preliminary statement are so 
manifestly inaccurate that his whole case is rendered doubtful 
thereby. 

Miles V. Todd, 1904 C. D. 420, 112 0. G. 1479. 

The proof of such reduction to practice is on the part of 
both parties several months later than as alleged in the pre- 
liminary statement. This fact would indicate a reprehensible 
looseness of assertion in the preliminary statements, which 
tends to descredit both parties. 

Shaffer v. Dolan, 1904 C. D. 592, 108 0. G. 3146. 

"\Yhere there is a "Preliminary Statement" which has the 
alleged dates of conception and disclosure of a device within 
the issue of the interference sustained by the testimony and 
the date of reduction to practice is not sustained, but a later 
date is established, it can not be contended that the P. E. 
refers to a device not in issue. The Preliminary Statement 
is a valid one, and there is presented the simple case of one 



Rule 110 PRELIMINARY STATEMENT. 41G 

of the dates in such statement having been erroneously al- 
leged. 

Storrie, 345 0. G. 845. 

(5) Reduction to Practice. 

If both parties reduced to practice on the same day priority 
will be awarded to the first to conceive. 
McParland v. Ball, 231 0. G. 603. 
These experiments sufficiently demonstrated the practicabil- 
ity of the invention and therefore amounted to reduction to 
practice. 

Slingluff V. Sweet, 230 0. G. 659. 
An applicant can not avail himself of a reduction to prac- 
tice in a foreign country. 

Loriner v. Eriekson, 227 0. G. 1445. 
Taking into consideration the original attitude of the ap- 
pellant with reference to this device, its peculiar construction 
and the manner of its use, we are satisfied, as was the Patent 
Office, that the thing which is now caller a mixer was in- 
tended for and was in fact merely a discharge spout. 
Euggles V. Ash, 226 0. G. 699. 
An experimental use apart from the complete apparatus 
for which it was intended held a reduction to practice. 
Creveling v. Jepson, 226 0. G. 339. 
The petitioner should allege his reduction to practice posi- 
tively in the terms of the rule, or should comply with the 
Examiner's requirement for a statement alleging whether the 
device was successfully used. 

Klocke V. Burk, 189 0. G. 779. 
A design patent as evidence of conception and reduction to 
practice. 

Lowrie v. Taylor & Taylor, 186 0. G. 1681. 
This allegation of reduction to practice should be alleged 
positively, either in the terms of the rule, or in such other 
language as will leave no question as to the actual reduction 
to practice of the invention. 

Williams v. Foyer and Kurz, 142 0. G. 1114. 
Filing of an incomplete application not a constructive re- 
duction to practice. (Payment of fee.) 
McElray, 140 0. G. 1207. 
The filing of an application by an official of the Patent 
Office does not constitute a constructive reduction to practice. 
McElray, 140 0. G. 1207. 
It was the idea of the telescoping arm that constituted the 
invention. No patent could have been obtained on the set- 



417 PEELIMINAEY STATEMENT. jRule 110 

screw because that was old in the art. We, therefore, hold 
that this set-screw Avas a mere mechanical addition to the 
device and obvious to any one skilled in the art, and that its 
absence did not prevent the original test from constituting a 
reduction to practice. 

Howard v. Bowes, 137 0. G. 733. 

It is well settled that after reduction to practice a mere 
delay of the inventor in applying for a patent, in the absence 
of concealment, abandonment or suppression, will not prevent 
the inventor from getting a patent based upon priority of in- 
vention. (Eolfe V." Hoffman, 26 App. D. C. 336.) 
Eose V. Clifford & Xewell, etc., 135 0. G. 1361. 

An inventor conceived an invention and embodied it in a 
model which was submitted to the company that controlled 
the sale of the machine for which the improvement was de- 
signed, but the company refused to purchase the invention 
and returned the model to the inventor. An officer of the 
company disclosed it to the foreman of the factory of a sub- 
sidiary corporation, who set about adapting it to the machine 
made by them for the parent company, and a completed ma- 
chine was built embodying such invention. Held that such a 
reduction to practice does not inure the inventor. 
Howell V. Hess, 132 0. Gr. 1974. 

When a publication is sufficient to constitute a bar against 
all later inventors, it should manifestly be accepted as estab- 
lishing the right of the one who made that disclosure and 
who with reasonable promptness filed his application for pat- 
ent in the United States. 

Marconi v. Shoemaker, 1907 C. D., 131 0. G. 1939. 

Article in the "Electrical World and Engineer," by Mar- 
coni, as a constructive reduction to practice. 

Marconi v. Shoemaker, 1907 C. D., 131 0. G. 1939. 

Altered machine, evidence as to extent and kind of altera- 
tion necessary. 

Burson v. Vogil, 125 0. G. 2361. 

The same act or sets facts may or may not constitute re- 
duction to practice, modified, as they may be by the special 
circumstances of the particular case. 

Andrews v. Nilson, 123 0. G. 1667. 

An inventor having reduced his invention to practice is 
entitled to a period of two years in which to put the same 
into public use and on sale without a forfeiture of his right 
to receive a patent based upon an application filed before the 
statutory bar has arisen. Neither abandonment nor forfeiture 



Rule 110 PBELIMIlSrAEY STATEMENT. 418 

within that period can be presumed but must be proved. 
Eolfe V. Hoffman, 121 0. G. 1350. 
It is necessary to prove a fact from which it can be con- 
cluded that the reduction to practice was accomplished. 
Bauer v. Crane, 118 0. G. 1071. 
In order for a device to constitute a reduction to practice 
of an invention defined in an issue of an interference, it is 
essential for that device to embody all the elements of the 
combination defined by the issue. If the elements are not 
present in the device which is offered in evidence and on 
which reliance is made the absence of these elements should 
be explained by the testimony. 

Eobinson v. Seelinger, 114 0. G. 263-3. 
Buffer springs were tested by being placed under a steam 
hammer and were broken. Held that the fact that they were 
broken shows that the springs were not a successful reduction 
to practice. 

Gallagher v. Hien, 114 0. G. 97. 
A failure to disclose an unclaimed element does not prevent 
the disclosure from being good evidence. 
Paul V. Johnson, 106 0. G. 2013-14. 
An accidental use of device will not serve to establish a 
date of reduction to practice. 

Whitney v. Howard v. Stanley & Stanley, 104 0. G. 1391. 
"MacDonald only testifies that the machine was 'tried' and 
was used at 'intervals.' He does not state the result of this 
use. 

"It is not necessary, of course, that the success must be a 
commercial success or a very high degree of success; but it is 
essential that it be established that there was at least some 
degree of success." 

MacDonald v. Edison, 105 0. G. 975. 
The tests of that machine were sufficient to establish its 
practicability and under well settled principle of law a com- 
mercial use of it was not necessary to constitute a reduction 
to practice. (Eoe v. Hanson, decided by Court of Appeals of 
the District of Columbia, April 1, 1902.) 

Donnelly v. Wyman, 103 0. G. 657-9, 104 0. G. 310. 
A shop test with dummy matches, made under all of the 
other conditions of actual use, demonstrates the practicability 
of the device as effectually as would use with real matches. 
Donnellv v. Wyman, 103 0. G. 657-8; affirmed, 104 0. 
G. 310. 
An allowable application is a constructive reduction to prac- 
tice. 

Osborne v. Hotsapillar, 1903 C. D. 47, 102 0. G. 1296. 



419 PEELIMINAEY STATEMENT. RuIg 110 

By a reduction to practice a party's rights are perfected and 
are subject to be defeated only by some such course of con- 
duct as that mentioned in Mason v. Hepburn, 84 0, G. 147; 
Estey V. Newton, 86 0. G. 799 ; Osborn v. Holspillar, 102 0. 
G. 1296. 

Testifying to the identity of a piece of rubber tube pro- 
duced by the party in interest with one used two years before 
in a construction that has since remained hidden from view 
lacks the weight necessary to overcome a former regularly 
issued patent. 

Buete V. Elwell,' 95 0. G. 2119-22. 
An allegation that the invention was reduced to practice in 
part at a certain date, held to limit aflBant. 

Carty v.. Kellog, 1895 C. D. 83, 73 0. G. 285. 
AVhile the destruction or dismantling of a first construction 
and the loss of some of its parts or their use in making other 
machines are sometimes important, they are only important 
when depending upon other circumstances tending to cast 
doubts upon the claims of the earlier reduction to practice. 

Funk V. Whitely, 17 0. G. 280. 

(6) Reduction to Practice Indicated hy Utility and 
Operativeness. 

The ability to accomplish the general object of the machine 
apparently necessary. Failure apparently due to matters out- 
side the invention. 

Janin v. Curtiss, 231 0. G. 1539. 

Taylor has offered to have the exhibit tested in order to 
show that it is now in operative condition. The result of such 
a test would, however, be immaterial. 

The question involved is whether Taylor has established a 
reduction to practice and that must be decided on the record 
as presented. 

Taylor v. Gilman, 158 0. G. 883. 

A device proving itself. 

Eolfe V. Kaisling v. Lieper, 143 0. G. 562. 

A decision depends upon the facts of each case. Cases 
classified into three groups : First, those in which the device 
is simple so that it is clear that it will operate without trial; 
second, the device workable, but mechanically defective; third, 
those in which the device requires that its operations be 
demonstrated by trial. (Cases cited.) 

In cases of the second and third class long delay in putting 
the machine in actual use has always been regarded as a 



Rule 110 PRELIMINARY STATEMEJSTT. 420 

potent circumstance in determining whether the test was suc- 
cessful or only an abandoned experiment. 

Sydeman & Meade v. Thoma, 141 0. G-. 866. 
Eeceiver for wireless messages. Sensitiveness of an iron 
core in a varying field. The invention clearly belongs to 
that class of inventions which require actual use or thorough 
test to demonstrate its practicability and in the absence of 
satisfactory proof of actual use or successful test it must be 
held that the devices were merely experimental in char- 
acter and that none of them constitute a reduction to practice. 
Marconi v. Shoemaker, 1907 C. D., 131 0. G. 1939. 
A machine may be crude in construction but if it contains 
all the essential elements of the invention of the issue, and in 
its operation successfully demonstrates its practical efficacy 
and utility, reduction to practice is accomplished. 

Burson v. Yogel, 1907 C. D., 131 0. G. 343, 29 App. 
D. C. 328. 
Utilizing old material. This may be done without nega- 
tiving reduction to practice. 

McCormick v. Hullwood, 1907 C. D., 130 0. G. 1487, 
31 App. D. C. 106. 
Reduction to practice must produce something of practical 
use coupled with a knowledge, preferable by actual trial, that 
the thing will work practically for the intended purpose. 

Sherwood v. Drewsen, 1907 C. D., 130 0. G. 657, 29 
App. D. C. 161. 
The device in controversy belongs to the type of simple 
devices requiring no demonstration referred to . in Mason v. 
Hepburn, 13 App. D. C. 510; Roe v. Hanson, 19 App. D. C. 
559, and analogous cases rather than to the devices disclosed 
in MacDonald v. Edison, 21 App. D. C. 527 and analogous 
cases. 

Rolfe V. Hoffman, 1906 C. D. 588, 121 0. G. 1350, 26 
App. D. C. 336. 
When the exhibits were made and tested "the work of the 
inventor was finished, physically as well as mentally," and 
there was a complete reduction to practice. 

Rolfe V. Hoffman, 1906 C. D. 588, 121 0. G. 1350, 26 
App. D. C. 336. 
Tests admitted not to be very satisfactory, plant soon dis- 
mantled, friends refused to assist in view of experiments, no 
application for a patent, no further attempts to operate for 
several years when other experiments were attempted, held 
merely abandoned experiment. 

Pohl V. McKnight, 1905 C. D. 549, 119 0. G. 2519. 



421 PEELIMIJv^AEY STATEMENT. RuIg 110 

The fact that one of the parts of the device broke after long 
use is not a sufficient reason for denying the inventor thereof 
the benefit of a reduction to practice (under tlie circum- 
stances). 

Foote V. Wenk, 1905 C. D. 391, 118 0. G. 1366. 
Where the construction of a device shows that it was adapted 
only for temporary experiments and there is no convincing 
evidence that it proved satisfactory in use, it must be re- 
garded as an abandoned experiment. 

Andrews v. Mlson, 1905 C. D. 384, 118 0. G. 1363. 
Where an invention is for an electrical circuit protector 
formed of delicate cooperative parts to be used in an art 
where an unexpected change in the current may cause vastly 
different effects. Held that such device needs a test m order 
to establish its practicability. It is not sufficient to prove 
that a device was used, it must be proved that it was suc- 
cessfullv used. 

Eolfe V. Hoffman, 1905 C. D. 353, 118 0. G. 833. 
It is not sufficient to show that a machine was built; it 
must be shown that it was capable of successfully performing 
the work for which it was designed. 

O'Connell v. Schmidt, 1905 C. D. 342, 118 0. G. 588. 
Such an invention does not belong to the class of simple 
inventions which were considered in Mason v. Hepburn, 1898 
C. D. 53 0, 84 0. G. 147, 13 App. D. C. 86; Loomis v. Hauser, 
1903 C. D. 530, 99 0. G. 1173, 19 App. D. C. 401; Coroch v. 
Barmett, 1904 C. D. 650, 110 0. G. 1431. 

O'Connell v. Schmidt, 1905 C. D. 343, 118 0. G. 588. 
Evidence of reduction to practice must embrace all the ele- 
ments of the issue, leaving nothing to inference merely. 

Eobinson v. Seelin^er, 1905 C. D. 640, 116 0. G." 1735, 
38 App. D. C. 337. 
In a case where the new devices are of an old type and 
their novelty consists in specific constructions of that old type, 
it may well be that their practical utility may be determined 
without actual use of them under conditions of industry. But 
not so where, as here, the type of device is a new type. 

Paul V. Hess, 1905 C. D. 610, 115 0. G. 351, 34 App. 
D. C. 
The commercial article would be made of metal, or of some 
substance more durable than wood; yet the wooden article is 
operative and is a complete reduction to practice. 

Xorden v. Spaulding, 1905 C. D. 568, 114 0. G. 1837, 24 
App. D. C. 386. 
A machine working imperfectly because of a mechanical 



Rule 110 PEELIMIISrAEY STATEMEISTT. 422 

defect, roughness of work, may nevertheless be a reduction to 
practice. 

Cummins v. McKenzie, -1904 C. D. 180, 110 0. G. 1167. 
The operation of the tip in issue was self-evident and there- 
fore no test was necessary to constitute reduction to practice. 
Shaffer v. Dolan, 1903 C. D. 422, 107 0. G. 539. 
A specific form held to constitute reduction to practice not- 
withstanding it might be improved. 

Slaughter v. Halle, 1903 C. D. 210, 99 0. G. 2771, 21 
App. D. C. 19. 
It seems it is not necessary that the machine should be one 
capable of doing full and satisfactory and economical work 
day after day in an industrial plant. 

Kelly V. Fynn, 1900 C. D. 339, 92 0. G. 1237, 16 App. 
D. C. 573. 
A material part of an apparatus may be separate from the 
apparatus and temporarily held up to its work, and yet con- 
stitute reduction to practice. 

Andrews v. Nilson, 1906 C. D. 717, 123 0. G. 1667, 27 
App. D. C. 451; Loewer v. Boss, 1896 C. D. 40, 76 0. 
G. 1711. 

(7) Diligence in Reducing to Practice. 

Does not require an inventor to devote his entire time 
thereto, nor can he be held responsible for reasonable delays 
in the preparation of the application. 

Courson v. O'Connor, 224 0. G. 1057. 
We have heretofore had. occasion to remark that the law 
encourages such delay as is required to test the thoroughness 
and utility of supposed inventions, and to prevent the Patent 
OfSce from being overloaded with applications for patent for 
crude and imperfect devices. 

Woods V. Poor, 130 0. G. 1313. 
Dilisrence will not wait on business arrangements. (Kaksen 
V. Hitherington, 88 0. G. 1157.) 
Paul V. Hess, 115 0. G. 251. 
A person may not excuse himself for delay by showing that 
he was trying to commerciallv exploit the invention. 
Seeberber v. Dodge, 113 0. G. 1415. 
It is necessary for 0, if he is to prevail in this proceeding, 
to establish the fact that he was diligent in reducing his in- 
vention to practice from a time just prior to the date on 
which Norton entered the field. 

Ocumpaugh v. Norton, 110 0. G. 1723. 



4:23 PEELIMINAEY STATEMENT. Rule 110 

Diligence, lack of, not attributable to the first to reduce to 
practice. 

Paul V. Johnson, 109 0. G. 807. 
Diligence will not wait on business arrangements. 

Kassen v. Hetherington, 88 0. G. 1157; Paul v. Hess, 
113 0. G. 847-9. 
An accidental, occasional, incomplete and imperfect opera- 
tion of a structure, especially when said structure was con- 
structed and designed to perform another and wholly different 
function, is not sufficient to establish the fact of invention. 
Such structure is not a reduction to practice. 

Brooks V. Hillard, 1903 C. D. 335, 106 0. G. 1237. 
In an interference proceeding the subject matter of which 
is an article of manufacture, an applicant is not chargeable 
with laxness, when he has manifested his willingness to dis- 
close the invention by filing an application for a machine to 
make such article. 

Blood V. Brown, 105 0. G. 496. 
In the present case it was the combination of the issue 
which proved unsatisfactory and not some other part of the 
machine. A plunger and flexible plunger rod are essential 
features of the present issue, and until they proved satis- 
factory the invention was not complete. 

Swihart v. Mauldin, 1902 C. D. 137, 99 0. G. 666, 19 
App. D. C. 570. 
In order to constitute a reduction to practice, it is neces- 
sary that the device should be capable of performing the func- 
tion for which it was intended. 

Loomis V. Hauser, 1902 C. D. 131, 99 0. G. 450, 19 
App. D. C. 401. 
Apparently not a reduction to practice unless utility was 
recognized. 

"Silverman v. Hendrickson, 1902 C. D. 123, 99 0. G. 445, 
19 App. D. C. 381. 
If a device would have worked, without doubt and clearly, 
on the omission of an element, but such element was not 
omitted, it was not a reduction to practice. 

Latham v. Armat, 1901 C. D. 337, 95 0. G. 252, 17 App. 
D. C. 345. 
There seems to be a tendency to require such proof of prac- 
tical operation of a device, after long delay, especially if some 
repairing was done after the alleged operation, as almost pre- 
cludes the use of such testimony. 

Howard v. Hev, 1901 C. D. 375, 95 0. G. 1647, 18 App. 
D. C. 142. 



Rule 110 PEELIMINAEY STATEMENT. 424 

The law encourages such delay as is required to test the 
thorouschness and utility of supj)osed inventions, also the law 
fosters diligence. 

Griffin v. Swenvers, 89 0. G. 191. 
The question of due diligence is one to be determined by 
the particular circumstances of each case. 
Griffin v. Swenvers, 89 0. G. 191. 
It has sometimes been held in the decisions of the Patent 
Office that the necessity for diligence on the part of the first 
conceiver does not arise until the date of the second concep- 
tion, but this we think can not be supported on principle. 
Christie v. Seybold, 64 0. G. 1650. 

(8) Model as a Reduction to Practice. 

' A device which merely illustrates the mode of mechanical 
construction and operation of the conceived idea and which 
may be said to be an embodiment of the invention in visible 
form is not necessarily a reduction to practice, for though the 
device is operative as- a mechanical movement there is no 
certainty that it will perform its function when put to use 
under full conditions of practical use. 

Ocumpaugh v. Norton, 1905 C. D. 632, 115 0. G. 1850, 

24 App. D. C. 296. 

The lock is full sized and well made, and since it embodies 
the invention it constitutes a reduction to practice. The 
suggestion on behalf of Hope that it must be regarded as a 
mere model is clearlv without force. 

Voigt V. Hope, 1905 C. D. 30, 114 0. G. 763. 

A model, no matter how well constructed, and notwith- 
standing the fact that it is complete in details and fully illus- 
trative of an operative construction is not in law a reduction 
to practice. 

Ocumpaugh v. Norton, 1904 C. D. 207, 110 0. G. 1723, 

25 App. D. C. 90. 

Making a full sized collar, exhibiting it to a number of 
persons and putting it on sale, is a reduction to practice. 
(Cites Lormis v. Hauser, 19 App. D. C. 401, in Avhich a full 
sized illustrated model was held to be a reduction to prac- 
tice.) 

Couch V. Barnett, 1904 C. D. 650, 110 0. G. 1431, 23 
App. D. C. 446. 
A full sized working model not a reduction to practice. 
The statement that by complying with (4) applicant meant 



425 PRELIMINAEY STATEMENT. Rule 110 

to comply also with (3) and (5) is ingenious but not con- 
vincing. 

Guett V. Tregening, 1905 C. D. 23, 114 0. G. 544. 
It is well settled that a model, no matter how complete, 
can not establish reduction to practice (Hunter v. Stikeman, 
85 0. G. 610). 

Paul V. Hess, 1904 C. D. 475, 113 0. G. 848, 24 App. 
D. C. 462. 
If a model is full size and capable of use to a sufficient ex- 
tent to demonstrate the practical utility of the invention, it 
may be a reduction to practice. 

Hammond v. Basch, 1905 C. D. 615, 115 0. G. 804, 24 
App. D. C. 469. 

(9) Extent of Use. 

It is important that the extent of use of a complete inven- 
tion be disclosed for reasons other than that it may possibly 
disclose the statutory bar of public use. It is not necessary 
that such disclosure should be prolix and give unnecessary 
details, but it should set forth in concise and explicit terms, 
the extent of use of the completed invention. 

Loeben v. Hamrick, 1899 C. D. 228, 89 0. G. 1672. 
Courts do not relieve against mistakes of law. 

Dahlgren v. Crocker, 1902 C. D. 107, 92 0. G. 2586. 
The extent and kind of use of the invention should be stated 
if the invention was perfected previous to two years before 
filing the application. 

Dermody v. Pennock, 1878 C. D. 93, 14 0. G. 202. 
So far as public use is concerned on an invention completed 
within two years prior to filing the application, it is un- 
necessary that the extent of use after completing be stated, if 
the preliminary statement is clear in setting forth the actual 
date of completion, and its use in a single instance. Where 
both are applicants the statement of such public use by one 
can not bar the other without an opportunity is afforded of 
examination and cross-examination of witnesses. 

Wheat, 1878 C. D. 110, 14 0. G. 787. 

(10) Conception of the Invention. 

It is the practical conception which the patent law requires. 

Storck V. Eeickhelm, 227 0. G. 365. 
The making of the device, therefore, amounted to a demon- 
stration of utility and constituted reduction to practice. In- 
deed, it would be difficult to find a clearer case. Not used. 
General Electric Co. v. Duncan Electric Mfg. Co., 165 
0. G. 242. 



Rule 110 PRELIMINARY STATEMENT. 426 

Mere know]ed,2:e by a foreign inventor or his agent is not 
eqni^'a]ent to a conception of the invention in this country. 
Gneniffet, Benoit & Vicanlt v. Wictorsohn, 131 0. G. 
1685. 
That H may have had a certain definite result in mind is 
quite probable, but that he had devised any means for accom- 
plishing that result is disproved by the surrounding fact and 
circumstances. 

Hansen v. Dean, 129 0. G. 483. 
A case that passes on the subject matter of this rule. 

Bless V. McElray, 128 0. G. 458. 
At most this buckle produced by E as G's original dis- 
closure, was an experimental model put away in a drawer for 
years. 

It was in the nature of an abandoned experiment. 

Gibbons v. Peller, 127 0. G. 3643. 
A complete conception as defined in an issue of priority of 
invention is matter of fact and must be clearly .established by 
proof. The conception of the invention consists in the com- 
plete performance of the mental part of the inventive act. 
Ritter V. Krakaw & Conner, 111 0. G. 1935-6. 
It seems probable that Talbot, after seeing Monell's process 
performed, has convinced himself that it was what he had done 
some years before, must have been an afterthought on his part 
in the liglit of Monell's disclosure, and the evidence does not 
support his claims. It must be held that Talbot had no con- 
ception of the process in issue until he had seen it performed 
by Monell. 

Talbot V. Monell, 107 0. G. 1093. 
A specific form is sufficient to show a conception and dis- 
closure of the generic invention.. 

Slaughter v. Halle, 99 0. G. 2771. 
Date of conception. 

Wallace v. Scott, 88 0. G. 1704. 
"A reasonable doubt on this point will be resolved against 
the inventor, and special circumstanc as, for example, unrea- 
sonable delay in making particular or commercial use of the 
invention or in applying for a patent and the like, would have 
a tendency to raise this doubt in a particular case." 
Eeute V. Elwell, 87 0. G. 2119. 
"It is also apparent that he had no idea at the time and 
did not have until he saw Elwell's patent of the additional 
uses and advantages of a rubber insulating tube capable of 
being bent or curved without fracture either independent of 
or in combination with the metal armor tube. His failure, 



427 PEELIMINARY STATEMENT. Rule 110 

however, to perceive this additional use and advantage would 
not bar his riglit to claim it as a part of his invention if it 
was a necessary incident, for it is well settled that one who is 
the first to make an invention is entitled to claim all the uses 
and advantages that belong to it, that is to say, that follow 
directly from it as described or manufactured whether they 
were conceived by him or not." 

Eeute V. Elwell, 87 0. G. 3119. 

(11) Disclosure of the Invention. 

Witness says he described the invention at a certain dinner. 
All the testimony goes to fixing the date of the dinner and 
there is no doubt but that a dinner occurred at that date. 
But there is no evidence of the disclosure at that time. 
Steinmetz v. Thomas, 137 0. G. 479. 
The communication of an idea of the desirability of accom- 
plishing a certain result without a disclosure of the means to 
be employed, can not be regarded as a communication of an 
invention. 

Fenner v. Blake, 134 0. G. 2244. 
A wife is now a competent witness for or against her hus- 
band though she is apparently not compellable to testify. 
Patee v. Cook, 167 0. G. 835. 
Disclosure to a draftsman alleged but drawings and ma- 
chine do not show it. 

■ It must, therefore, be held on this branch of the case that 
appellant has failed to overcome the heavy burden resting 
upon him. 

Peters v. Pike, Jr., 143 0. G. 259. 
An effective disclosure is one that enables one skilled in the 
art to embody the invention in physical form. 
Hopkins v. Newman, 131 0. G. 1161. 
The sufliciency of a machine upon which a party would rely 
to establish his dates of invention as disclosure of the inven- 
tion in issue should be determined by the official when the 
machine is introduced in evidence and in connection with the 
testimony which may be taken concerning it. 
Barr v. Bugg, 122 0. G. 2061. 
Competency of wife's. 

Narsh v. Eein v. etc., 43 0. G. 1453; Dobeck v. Wovolny, 
58 0. G. 804; Crawford v. Seickentstein, 61 0. G. 
1480; Kowen v. Quinet, 23 0. G. 1329; Workman v.. 
Cork, 107 0. G. 835; Patee v. Westcott, 1880 C. D. 
167; Harton v. Barrett, 114 0. G. 975; Davis v. Ken- 
nard, 131 0. G. 695; Davis v. Garrett, 123 0. G. 1991. 



Rule 111 WHEN OPENED TO INSPECTION. 428 

Disclosure — Skilled in the art. 

Papin V. Strong, 100 0. G. 931. 
Disclosure in the sense of the patent law must be made 
ordinarily to persons competent to understand and appreciate 
the alleged invention. Otherwise there is no true disclosure. 
Examples : 

Of the incompetent, Eastman v. Huston, 95 0. G. 2064; 

of the competent, Papin v. Strong, 100 0. G. 931. 

When an inventor disclosed one form of invention to his 

attorney but did not disclose a form having a fewer number 

of elements, etc., it tends to show that he had not thought of 

the second form at that time. 

Pierce v. Hallett, 18 0. G. 265. 

(12) Additional Cases. 

Cases that pass on the subject matter of this rule : 

Clement v. Eichards v. Meissner, 1904 C. D. 492, 113 0. 
G. 1143; Quest v. Ostrom, 1903 C. D. 348, 106 0. G. 
1501 ; Fowler v. Boyce, 1906 C. D. 580, 121 0. G. 1014, 
27 App. D. C. 48-55; Davis v. Garrett, 1906 C. D. 724, 
123 0. G. 1991, 28 App. D. C. 9; Steinmetz v. Thomas, 
1906 C. D. 478, 125 0. G. 1351, 31 App. D. C. 574; 
Matthes v. Burt, 1904 C. D. 296, 111 0. G. 1363, 24 
App. D. C. 265; Gallagher, Jr., v. Hien, 1905 C. D., 
115 0. G. 1330, 24 App. D. C. 269 ; Erunk and Mickle 
V. Whitely, 1905 C. D. 34, 114 0. G. 971; Eobinson v. 
Phresher, 123 0. G. 2976. (Cites Robinson v. Phresher, 
123 0. G. 2627 ; Frunk v. Whitely, 25 App. D. C. 313- 
315.) 

Rule 111. When Opened to Inspection. 

The preliminary statements shall not be opened to 
the inspection of the opposing parties until each one 
shall have been filed, or the time for snch filing, with 
any extension thereof, shall have expired, and not 
then nnless they have been examined by the proper 
ofiScer and found to be satisfactory. 

Any party in default in filing his preliminary state- 
ment shall not have access to the preliminary state- 
ment or statements of his opponent or opponents 
until he has either filed his statement or waived his 



429 NOTICE TO AMEND. Rule 112 

right thereto, and agreed to stand upon his record 
date. 

A party who alleges no date in his preliminary 
statement earlier than the filing date of the applica- 
tion or applications of the other party or parties shall 
not have access to the preliminary statement of said 
party or parties. 

CONSTRUCTIONS. 

A preliminary statement unopened because the opposing 
party failed to overcome record date is not accessible even 
after patent issued. 

Bacon, 1902 C. D. 151, 99 0. G. 861. 
If a person makes a motion that requires a suspension of 
the running- of the time limited he must take notice that the 
time begins to run again immediately upon the determination 
of the motion. 

Whipple V. Sharp, 1902 C. D. 2, 98 0. G. 225. 
Where an action is required to be taken within a certain 
time after a decision the date of the decision and not the date 
of the receipt of the notice of it is what governs. 
Whipple V. Sharp, 1902 C. D. 2, 98 0. G. 225. 
The statement will not be returned even if it is not opened. 
Baxter, Jr., 1891 C. D. 147. 

Rule 112. Notice to Amend. 

If, on examination, a statement is found to be de- 
fective in any particular, the party shall be notified 
of the defect and wherein it consists, and a time as- 
signed within which he must cure the same by an 
amended statement; but in no case will the original 
or amended statement be returned to the party after 
it has been filed. Unopened statements will be re- 
moved from interference files and preserved by the 
office, and in no case will such statements be open to 
the inspection of the opposing party without authority 
from the Commissioner. If a party shall refuse to 
file an amended statement he may be restricted to his 



Rule 113 MOTION TO AMEND. 430 

record date in the further proceedings in the inter- 
ference. 

CONSTRUCTIONS. 

Where tlie application was made by the administrator and 
assig-ncd, the assignee may make the statement. 

The preliminary statement required in interference pro- 
ceedings are in the nature of pleadings which require certainty 
of expi'essioii. Tt is witiiin the Jui'isdiction of the Examiner 
()f InterrcMvnces to require an aiiuMuUsd statement whenever, 
in his opinion, the cii-cumstances are such as to throw doubt 
upon the accuracty of tlie statement already submitted. The 
decision of the Examiner will not be reviewed except in a 
clear case. 

Opaller v. Huges, 158 0. G. 481. 

The rule requires that these dates and the extent of use be 
set forth, or, if tliere has been no model reduction to practice 
or use, tiiat snch facts be specifically disclosed. A preliminary 
statement lacking this should not be accepted until attention 
has bccji called to its defects and opportunity has been given 
for amendment. The objection should have been made before 
the parties were permitted to inspect the statements of their 
opponents. Not having been made then it should, in view of 
all the circumstances of the case, be made now. 
Schoonmaker v. Sintz, 123 0. G. 2974. 

The Oilice can not strike out part of a statement, but may 
strike out the entire statement because a part of it is im- 
proper, and then require a statement omitting the improper 
part. 

Shaw V. Gaily, 1!)03 G. D. 348, 100 0. G. 3014. 

Rule 113. Motion to Amend. 

In case of material error arising through inad- 
vertence or mistake, the statement may be corrected 
on motion (see Eule 153), upon a satisfactory showing 
that the correction is essential to the ends of justice. 
The motion to correct the statement must be made, 
if possible, before the taking of any testimony, and 
as soon as practicable after the discovery of the error. 



431 MOTION TO AMEND. RuIg 113 

. HISTORY. 

Kule introduced about 1878. 

See Historical Notes to Rule 110. 

CONSTRUCTIONS. 
In General. 
Excuse for Mistake. 

In General. 

The fact that applicant was not notified that two design 
applications by his opponent were included, is sufficient to 
warrant the allowance of an amendment. 
Hocker v. Parr, 193 0. G. 1220. 
Insufficient showing to warrant the allowance of an amend- 
ment. 

Richnitzer v. Bernegau, 193 0. G. 512. 
A motion to amend depending upon testimony should be 
made at the final hearing and should be appealed as a part of 
the decision on priority. 

Gramraeter v. Thropp, 190 0. G. 266. 
Notice that motion to amend would be made on final hear- 
ing. 

Perre v. Thoma, 188 0. G. 1053. 
An amendment allowed in view of loss of memory due to 
sickness. 

Lindstrom v. Macdonald, 187 0. G. 831. 
A motion under thi,s rule may very properly be postponed 
to the final hearing where it is necessary to consider all the 
testimony in deciding the motion. 

Gammeter v. Tliropp, 178 0. G. 320. 
A preliminary statement allowed to be amended so as to 
permit evidence to show that an alleged model was in fact a 
full sized machine or apparatus. 

Klink v. Kruse, 177 0. G. 1300. 
The discretion of the Commissioner will not ordinarily be 
disturbed bv the Court of Appeals. 

Thomas v. Wientraub, 177 0. G. 772. 
In matters of record or publications which do not depend 
upon fallible witnesses less strictness is required. 
Cramer et al. v. Carrier, 177 0. G. 769. 
Amendments largely within discretion of Examiner. 

Cramer et al. v. Carrier, 177 0. G. 769. 
An amendment will not be permitted except upon the most 
satisfactory proof of actual mistake and a showing of the 



Rule 113 MOTION TO AMEND. 432 

utmost care in the preparation of the original statement. 
Cases. 

Whitall V. Gillispie v. Blaw, 171 0. G. 744. 
The showing rather indicates that if the drawings had been 
examined with reasonable diligence the allowed new matter 
would have been discovered. Moreover neither a drawing nor 
a copy of them has been produced. Showing insufficient. 
Goldberg v. Crumpton v. Carlin, 141 0. G. 286. 
A motion to amend a preliminary statement will not be 
granted in the absence of a valid ground therefore, even 
though the proposed amendment does not seek to change the 
sequence of dates, but only to avoid any unfavorable pre- 
sumptions arising owing to the discrepancy between the state- 
ment and testimonv. 

Eidgway v. Tilyon, 137 .0. G. 979. 
The Examiner of Interferences will not hereafter set a 
limit of appeal in decisions granting motions to amend pre- 
liminary statements. He will, however, set a limit of appeal 
in his decisions denying leave to amend preliminary state- 
ments. 

Smith & Wickes v. Emerson v. Sanders, 133 0. G. 1433. 
The failure of H, the assignee, to communicate this in- 
formation to P, or to obtain data for the statement for coun- 
sel, clearly shows such negligence on the part of the parties 
interested as should preclude the granting of their request for 
relief. 

Anderson v. Peck, 133 0. G. 229. 
It is well settled that the applicant is chargeable with such 
acts of negligence on the part of counsel. 
Anderson v. Peck, 133 0. G. 329. 
No amendment after testimony. 

Green v. Farley, 132 0. G. 235. 
Lack of proper care. It is discretionary with the Examiner, 
by whom the testimony is to be considered, whether or not 
he 'will postpone the consideration of the motion until the 
final hearing. 

Smith V. Ingram, 131 0. G. 2420. 
The showing is deemed insufficient to warrant the amend- 
ment for reasons indicated above and more fully set forth in 
112 0. G. 449; 108 0. G. 56; 116 0. G. 874. 

Johnston v. Erekson and Carlson v. Burnard, 131 0. G. 
2419. 
After making preliminary statement, applicant consulted his 
wife and stenographer, and this recalled a matter that had 



433 MOTioisr TO amend. Rule 113 

escaped his memory. In view of prompt action amendment 
allowed. 

Davis V. Kiunard, 1907 C. D., 131 0. G. 695. 

Apparently if a motion is made to amend in view of the 
fact that applicant had recalled material facts in consultation 
with otliers, the names of those consulted should be given. 
Davis V. Kinnard, 1907 C. D., 131 0. G. 695. 

Amendments to preliminary statements are to be permitted, 
after a party has had opportunity to inspect his opponent 
case, only in cases where bona iide mistakes of fact have been 
made and a full and clear showing is made that there was no 
nes'lififence in discovering the true facts. 

" Borg V. Strauss, 130 0. G. 2719. 

A party will not be permitted to amend his preliminary 
statement to carry back his date of disclosure to cover the date 
proved by his opponent in a prior interference with a third 
party where the amended date is earlier than that set up in 
a preliminary statement filed three years before in an inter- 
ference between his and said third party and where the affi- 
davit in support • of the motion indicates an uncertainty 
whether the alleged disclosure took place prior to the date 
originally given. 

" Beall, Jr., v. Lyon, 126 0. G. 388. 

Whether leave shall be given to amend a preliminary state- 
ment is a matter that rests in the discretion of the Com- 
missioner and is not reviewable save possibly in a case of 
palpable abuse of that discretion. 

Neth & Tamplin v. Ohmer, IU06 C. D. 693, 123 0. G. 
998, 30 App. D. C. 478. 

The filing of a statement after other statements are opened 
will not be permitted except in a clear case. 

Dutcher v. Matthew v. Dutcher & Peters v. Jackson, 1905 
C. D. 455, 118 0. G. 2o38. 

The question of extension of time for Bling preliminary 
statements is left wholly within the discretion of the Ex- 
aminer of Interference and that from his decision upon these 
matters no appeal will lie. In rare cases to prevent hardship 
an appeal may be allowed. In all such cases the decision of 
the Examiner must be complied with until the appeal is 
allowed. 

Ohmer v. Neth & Tamplin, 1905 C. D. 412, 118 0. G. 
1686. 

On a motion to amend a preliminary statement the question 



Rule 113 MOTioisr to amend. 434 

is not whether the moving party would be able to prove his 
case if amendment were permitted but is whether the showing 
made warrants permitting amendment. 

Neth and Tamplin v. Ohmer, 1905 C. D. 177, 116 0. 
G. 874. 
Whether an amendment shall be allowed under the rules of 
practice of the Patent Office calls for the exercise of a wide 
lattitude of discretion by the Commissioner and certainly 
nothing less than an abuse of that discretion, causing a pal- 
pable miscarriage of justice, would warrant the review and 
reversal of this action. (Cross v. Phillips, 14 App. D. C. 
238.) 

Hammond v. Basch, 1905 C. D. 615, 115 0. G. 804, 34 
App. D. C. 469. 
Amendment of preliminary statement, question not reviewed 
by the Court of Appeals. 

Eichards v. Meissner, 114 0. G. 1831, 34 App. D. C. 305. 
Acts in foreign country. 

Emmet v. Fullager, 1905 C. D. 53, 114 0. G. 1551. 
The publication is something which is fixed and certain 
both as to date and subject matter. Under such circum- 
stances the rule requiring that the utmost diligence must be 
shown to have been exercised in preparing the original state- 
ment may be applied with less strictness. 

FuUagar v. Junggren, 1905 C. D. 51, 114 0. G. 1550; 

Davis V. Ocumpaugh v. Garrett, 1903 C. D. 1987, 104 

0. G. 3440; Emmett v. Fullagar, 1905 C. D. 53, 114 

0. G, 1551. 

After the testimony of one of the parties has been taken, 

relying upon the dates alleged by the other party, he will not 

be permitted to amend his statement to change these dates 

without a most clear and satisfactorv showing. (Franklin v. 

Morton v. Cooley, 95 0. G. 3063.) 

Bliss v. Creveling, 1904 C. D. 381, 113 0. G. 499. 
It would seem that in view of the fact that the considera- 
tion of Bauer^s testimony is necessary in order to rightly 
determine whether or not he is entitled to amend his pre- 
liminary statement, this consideration should be postponed 
until the date or final hearing. 

Bauer v. Crone, 1904 C. D. 336, 111 0. G. 1930. 
In case of a clerical error where the motion to amend is 
made promptly, it is proper to allow it. 

Osbom V. Mitchell, 1904 C. D. 354, 111 0. G. 300. 
The burden was upon him to show that he could not have 



435 MOTioisr TO ameistd. Rule 113 

made the discover}' by diligent and careful search and he has 
not done this. 

Hamilton v. Carroll v. Goldberg v. Stahlberg, 1904 C. D. 

248, 110 0. G. 2510. 

If a fact is Avell known when the preliminary statement is 

made and is not set forth therein, the failure to include it is 

negligence and is not a mistake of fact, such as to warrant 

the amendment of preliminary statement. 

June V. Linn, 1904 C. D. 203, 110 0. G. 1430; Solley 
V. Peck, etc., 1903 C. D. 259, 105 0. G. 1262. 
Eefused to let contestant change model to full sized ma- 
chine to correspond with the testimony under the circum- 
stances of the case. 

Parkes v. Lewis, 1904 C. D. 142, 110 0. G. 305. 
If parties exercised the care in preparing their statements 
which they exercise in discovering evidence after knowing 
their opponent's dates, motions to amend preliminary state- 
ments would seldom be made and parties would never find 
themselves in the position of being unable to produce perti- 
nent evidence because of their preliminary statements. Amend- 
ment not permitted. 

Fowler v. Boyce v. Temple & Goodrum, 1904 C. D. 22, 
108 0. G. 562. 
The motion to amend is defective in that he merely alleges 
that he made a mistake as to his date of reduction to practice 
and wishes to amend. He does not state the date he wishes 
to allege nor the facts upon which the allegation is to be 
based. 

Fowler v. Bovce v. Dyson v. McBertv, 1903 C. D. 434, 
107 0. G. 544. 
Failure to mention the finding of a sketch to his attorney, 
or make any move to amend until after he had learned from 
the testimony taken by Andrews what date it was necessary 
for him to allege which is in itself a sufficient reason for 
denying the motion. 

Andrews v. Nelson, 1903 C. D. 287, 105 0. G. 2059. 
Insufficient reasons for amendment, laches. 

McHarg v. Schmidt & Maryland, 1903 C. D. 216, 105 
0. G. 263. 
A showing of facts upon which the Commissioner can reach 
the conclusion that the mistakes arose from inadvertence, 
must be made. 

Brown v. Keeney, 1903 C. D. 211, 105 0. G. 260. 
The fact that a motion to amend a statement is brought 
after the testimony of the opposing party has been taken is 



Rule 113 MOTioisr to amend. 436 

always a suspicious circumstance, and the showing in support 
of such a motion is to be carefully scrutinized. 

Pope & Mimo v. McLean, 1903 C. D. 186, 104 0. G. 2147. 
If amendments to preliminary statements were permitted 
merely because the evidence shows the facts to be in accord- 
ance therewith, the rule requiring preliminary statements 
might as well be abolished. 

Woodward v. Kennedy, 1903 CD. 106, 104 0. G. 1393. 
It must appear clearly that the party used all reasonable 
care and diligence in preparing his original statement and in 
discovering the facts he alleged therein. 

Woodward v. Kennedy, 1903 C. D. 106, 104 0. G. 1393. 
It is not believed that the desire of the Office to discover 
all the facts and to issue the patent to the one who is in 
fact the first inventor justifies it in relieving a party from the 
effects of such negligence as has been exhibited in this case. 
Steiver, 1902 C. D. 381, 101 0. G. 1130. 
An amendment refused because of negligence in the first 
preparation. 

King V. Hansen, 1902 C. D. 378, 101 0. G. 1129. 
An amendment stating date of making a model admitted. 

Williams v. Liberman, 1902 C. D. 295, 100 0. G. 1332. 
A new preliminary statement will not be admitted upon a 
redeclaration of the interference with part of the counts in it 
only. 

Seaman v. Brooks, 1902 C. D. 267, 100 0. G. 685. 
It is not stated what the additional facts are; nor is it 
stated that the utmost diligence was exercised in making the 
discovery. The affidavit does not state the ways and means 
employed in finding the new facts neither does it point out 
why the same ways and means could not have been earlier 
employed. The showing is not sufficient. 

Seaman v. Brooks, 1902 C. D. 267, 100 0. G. 685. 
An affidavit by the inventor and by another received in sup- 
port of the motion. Where no testimony has been taken and 
the new dates are not earlier than his opponent's, the motion 
will the more readily be granted. 

Gales V. Berrigan, 1902 C. D. 232, 100 0. G. 232. 
Courts do not relieve against mistakes of law. 

V. V. M. V. Cooley, 1901 C. D. 49, 95 0. G. 2063; Dahl- 
gren v. Crocker, 1902 C. D. 107, 98 0. G. 2586. 
The rule is that only the utmost diligence will be a suf- 
ficient showing. But may be relaxed under proper circum- 

Siiver v. Eustes, 1902 C. D. 91, 98 0. G. 2361. 
If the case has so far advanced that testimony has been 



437 MOTION TO AMEND. Rule 113 

taken, each party rel5dng on the other's statement for the 
dates which must be overcome, an amendment to set back 
these dates is open to suspicion and will be received only upon 
a clear showing of mistake, and, further than that, the mov- 
ing party must be free from negligence anH must show the 
utmost diligence in seeking to correct the mistake. 

Henderson v. Noakes, 1893 C. D. 114, 29 0. G. M31; 
Lockwood V. Schmidt, 1902 C. D. 253, 100 0. G. 453; 
McDermott v. Hildreth, 1902 C. D. 43, 98 0. G. 1282. 

The preliminary statement ought not to be amended, after 
testimony taken, to insert facts which were within the knowl- 
edge of the affiant before the testimony was closed. 
Mills V. Tortance, 1902 C. D. 17, 98 0. G. 416. 
Must relieve of default before making motion. 

Atkins V. Paul v. Johnson, 1901 C. D. 35, 94 0. G. 1785. 
Must be presented to Examiner of Interferences. 

China and Japan Trading Co., Limited, 1900 C. D. 157, 
92 0. G. 2508. 
May not be amended to read as early as May instead of in 
Mav. " 

" Miehle v. Eead, 1899 C. D. 191, 89 0. G. 354. 
When the error is merely a mistake in a legal conclusion and 
it is not sought to set up a different state of facts, the amend- 
ment may be made. 

Eichardson v. Humphrey, 1899 C. D. 179, 88 0. G. 2241. 
Motions to amend preliminary statements should not be dis- 
posed of upon affidavits alone, but upon the entire record. 
Foster & Foster v. Bent, 1896 C. D. 89, 77 0. G. 1781. 
Amendments to the preliminary statement should be gov- 
erned by the same rules as are applied to pleadings by the 
courts. "The preliminary statement should be amended where 
indisputable fact or clearly proved circumstances support the 
necessary inference that a mistake has been made Avhich would 
defeat the ends of justice, where with all reasonable diligence 
in ascertaining facts and in making the statement a drawing 
or a model or an abandoned application or some other fact 
of clear date and origin has been unearthed which by reason- 
able diligence could not have been found and which in fact 
was not found earlier. 

Foster & Foster v. Bent, 1896 C. D. 89, 77 0. G. 1781. 
A decision of the Commissioner of Patents denying an in- 
terfering party^s motion to amend his preliminary statement is 
a judicial rather than a ministerial act, and consequently one 
over which the Secretary of the Interior has no appellate 
jurisdiction. 

Noakes, 1892 C. D. 243, 66 0. G. 575. 



Rule 113 MOTION" TO AMEND. 438 

No appeal lies to the Secretary of the Interior from the 
Commissioner's refusal to admit an amended statement. 
Noakes, 1892 C. D. 243, 60 0. G. 575. 
Utmost care and diligence must be shown before amend- 
ment allowed. 

Henderson v. Noakes, 1892 C. D. 114, 69 0. G. 1431. 
Motions to reopen brought in the first instance before the 
Examiner of Interferences. 

Bowen v. Bradley, 1892 C. D. 13, 58 0. G. 386. 
The Office acts judicially rather than ministerially in per- 
mitting or denying the amendment of a preliminary state- 
ment. 

Henderson v. Foakes, 1892 C. D. 123, 59 0. G. 1762; 
Washburn v. Hadfield, 1891 C. D. 234, 57 0. G. 1719. 
When a preliminary statement is amended for any reason, 
the original statement remains to confront the applicant and 
to be considered in determining what the real truth was. 
Zwietusch v. Stockholm, 1890 C. D. 151, 53 0. G. 755. 
An amendment of the preliminary statement should not be 
permitted in order to allow the date of conception and re- 
duction to practice in a foreign country to be inserted. 
Boulton V. lUingworth, 1888 C. D. 32, 43 0. G. 508. 
If a person knowing that the dates alleged in his prelimi- 
nary statement are not the earliest he can establish, neglects 
to ask a postponement until he can refresh his memory, and 
waits until his opponent has put in his evidence before asking 
to amend, he has not used sufficient diligence to entitle him 
to an amendment. 

Donnelan v. Berry, 1887 C. D. 140, 41 0. G. 1499. 
A motion to amend the preliminary statement can not be 
repeated after having been once rejected without especial per- 
mission. Practice in such cases. 

Clemson v. Fowler, 1886 C. D. 35, 37 0. G. 671. 
The preliminary statement may be amended in respect to 
the date of invention upon a proper showing, so that the evi- 
dence taken may be at least considered. 

Eobinson v. Seymour, 1885 C. D. 98, 33 0. G. 113. 
It is only in cases where parties have failed to comply with 
the law after having made reasonable and proper efforts to do 
so that further opportunity "to amend is or should be ac- 
corded. 

Smith V. Thomas v. Cowles, 1885 C. D. 12, 30 0. G. 343. 

Where it is made reasonably certain that a mistake has 

been made an amendment of the preliminary statement should 

be allowed at any time before the closing of testimony. If 



439 MOTION TO AMEND. Rule 113 

Biich amendment renders it necessary for the opposite party to 
take further testimony, he should be allowed to do so on 
proper motion. 

Moore v. Brown, 1882 C. D. 20, 22 0. G. 1882. 
Unless the party having made such statement asks to amend 
the same before any testimony is taken in the case, all par- 
ties have a right to proceed on the issue as made in the re- 
spective statements. 

Hopkins v. LeEoy, 1880 C. D. 188, 18 0. G. 859. 
It is contrary to public policy to allow amendments of pre- 
liminarv statements after they are opened. 

Oliver V. Zeller, 1876 C. D. 187, 10 0. G. 416. 
Ignorance and carelessness are not adequate reasons for 
allowing an amendment of the preliminary statement after the 
statement is open to the inspection of the opposite party. 

Guest V. Finch, 1876 C. D. 144, 10 0. G. 165. 
If an applicant was of unsound mind at the time of making 
the preliminary statement he may be permitted to amend, or 
the preliminarv statement can be dispensed with. 

Brooks, 1874 C. D. 84, 6 0. G. 296. 
An amendment to the preliminary statement after the deci- 
sion by the Examiner and the Board, which attempts to carry 
back the date of invention, could, in the light of the proof, 
have no possible effect, unless to impugn deponents veracity. 

Cutting V. Kaylor, 1872 C. D. 26-5,"2 0. G. 704. 
The sole object of the rule requiring sworn preliminary 
statements is to prevent all shuffling with regard to the date, 
when a party in interference made his invention. Nothing 
but a fraud, perhaps, practiced on the deponent should relax 
this rule, but a mere clerical error might be corrected. 

Allen & Moody v. Oilman, 1872 C. D. 205, 2 0. G. 293. 

Excuse for Mistake. 

F's explanation as to his misuse of the word "mode?' in its 
legal sense is a reasonable one, and in view of the fact that 
his motion was brought prior to the taking of any testimony 
it is thought his motion should have been granted, if the only 
change he desired to make was to allege that a device made in 
a certain date constituted a reduction to practice instead of 
a model. 

Dav V. Adt V. Hardy, 1906 C. D. 526, 125 0. G. 2765; 
Fordyce v. Tarsey^ 1903 C. D. 31, 102 0. G. 821. 

A motion to amend a preliminary statement to correct the 
inadvertent use of the word "model" instead of the words 
•'full sized machine'^ will not be granted where it is found 



Rule 113 MOTION TO AMEND. 440 

that the device referred to as the "full sized machine" does 
not disclose the issue. 

Parkes v. Lewis, 1906 C. D. 2, 120 0. G. 323. 
The meaning of words should be ascertained before using 
them in a preliminary statement. A mistake in this respect 
is not an excuse permitting an amendment. 

Dunn V. Halliday, 1905 C. D. 510, 119 0. G. 1261. 
That the search conducted was originally unsuccessful not 
sufficient excuse. 

Hovt V. Sanders v. Hawthorne, 1905 C. D. 508, 119 
6. G. 1260. 
Where the alleged error in a preliminary statement is dis- 
covered as soon as inspection of the opposing party's case re- 
veals the fact that the allegation of an earlier date is neces- 
sary, the presumption is strong that the alleged error could 
have been discovered sooner if proper care had been exercised. 
mth & Tamplin v. Ohmer, 1905 C. D. 177, 116 0. G. 
874. 
Amendment to a preliminary statement will not be per- 
mitted where the excuse for the alleged error is forgetfulness 
and there is no showing what effort, if any, was made to re- 
fresh his recollection originally or what steps were taken to 
fix definitely and certainly the dates to be alleged. 

rries,tedt v. Harold, 1905 C. D. 161, 116 0. G. 594. 
Negligence of attorneys is not sufficient excuse. 

White V. Hewitt & Nolen, 1905 C. D. 130, 115 0. G. 
1846. 
G is the one to state what he understood. It is not suf- 
ficient for his attorney to allege what he supposed was G's 
understanding of the matter. 

Guett V. Tregoning, 1905 C. D. 23, 114 0. G. 544. 
It is for the Office to determine whether it was impossible 
for the deponent to get into communication with a witness. 
Bliss V. Creveling, 1904 C. D. 381, 112 0. G. 499. 
Where a preliminary statement was drawn under a fair mis- 
concention of the issue an amendment was permitted. 

Carroll v. Stahlberg, 1904 C. D. 331, 111 0. G. 1937. 
It is necessary not only to show that there was an actual 
mistake, but how it arose. Where original statement in writ- 
ing shows certain dates and it is alleged that the dates were 
changed by oral conversation, it required a very good showing 
to permit their change to original condition. 

Heinitch & Morairty v. Congdon v. Kelsea, 1903 C. D. 
302, 106 0. G. 542. 
If a fact is well known when the preliminary statement is 



441 PEELIMINARY STATEMENT. Rule 114 

made and it is not set forth therein, the failure to include 
it is negligence and not a mistake of fact such as to warrant 
the amendment of the preliminary statement. 

Soley V. Peck v. Clement v. Eicliards v. Meissner, 1903 

C. D. 259, 105 0. G: 1262. 

A mere statement that the mistake arose from inadvertence 

and mistake is not sufficient especially after two months delay. 

Brown v. Cutler v. Keeney, 1903 C. D. 182, 104 0. G. 

1896. 

Rule 114. Failure to File Preliminary Statement. 

If the junior party to an interference, or if any 
party thereto other than the senior party, fail to file 
a statement, or if his statement fail to overcome the 
prima facie case made by the respective dates of ap- 
plication, such party shall be notified by the examiner 
of interferences that judgment upon the record will 
be rendered against him at the expiration of thirty 
days, unless cause be shown why such action should 
not be taken. Within this period any of the motions 
permitted by the rules may be brought. Motions 
brought after judgment on the record has been ren- 
dered will not be entertained unless sufficient reasons 
appear for the delay. 

CONSTRUCTIONS. 

A party under an order to show cause can not have access 
to his opponent's papers. 

Henderson and Camley v. Kindervater, 192 0. G. 741. 
If the junior party, who is under an order to show cause, 
believes that the claims of the issue are improper or that he 
is the first inventor of subject matter common to the cases of 
the interferrants which is not set forth in the issue, it is his 
(I'ltv to nresent within the time allowed suitable motions either 
under Eules 122 or 109. 

Crone v. White, 181 0. G. 1072. 
If it is desired to take testimony a motion should be made 
to set the case down for hearing under Eule 130. 
Noble V. Levin, 180 0. G. 602. 
Barnev v. Hess, 158 0. G. 702. 



Rule 114 PEELIMINAKY STATEMENT. 442 

A party may move to dissolve for lack of patentability in 
reply to an order to show cause, but in order that he should 
be heard, it is incumbent on him to comply strictly with the 
rules. If filed subsequent to the thirty days very good rea- 
sons for the delay must be shown. 

Eyder v. Brown v. Tripp and Means v. White, 137 0. 

"G. 1228. 

The affidavit of a physician that the applicant is mentally 

incapable of making a preliminary statement is insufficient 

if it does not "appear that any effort has been made to have 

a legal representative appointed." 

'Churchill v. Goodwin, 132 0. G. 1838. 
A motion to dissolve on the ground of nonpatentability of 
the issue is a proper reply to an order to show cause under 
Eule 114. 

Field V. Colman, 131 0. G. 1687. 
Cause must be shown by motion. 
Filbel V. Fox, 130 0. G. 2375. 
A patent held not to evidence conception of invention at 
the date of filing the application inasmuch as the invention 
was improperly inserted. 

McKnight v. Pohl, 130 0. G. 2069. 

Hewitt'v. Weintraub v. Hewitt & Eogers, 128 0. G. 1689. 
See note under Eule 109. 
Eule 114 was amended March 13, 1903, by the omission of 
the provision requiring a motion to be noticed within the 
limit of appeal and the practice under Meyrose v. Jahn, 1891 
C. D., 56 0. G. 1447, has been modified in Kneedler v. 
Shepard, 190^ C. D. 180, 104 0. G. 1895, so that motions 
under said rule need not be noticed for hearing within the 
term allowed for filing motions. 

Naully v. Cutler, ^907 C. D., 126 0. G. 3. 
If a preliminary statement alleged a date between two limits 
and the later of said limits would not overcome the opponent's 
prima facie case, judgment should be rendered against affiant. 
Steinmetz v. Thomas, 1906 C. D. 478, 125 0. G. 1351. 
Eule does not clearly and unmistakably require the Ex- 
aminer of Interferences to render judgment against a party 
who has been called upon to show cause under that rule and 
who fails to take any action in response. No appeal from 
a refusal to render judgment on the record. 

Lemp V. Eandall & Bates v. Thomson, 1906 C. D. 42, 
120 0. G. 905. 
Where the preliminary statement of N and T failed to over- 



443 PEELIMIlSrAEY STATEMENT. Rule 114 

come the record date of O's application and motion by IST and 
T to amend their preliminary statement has been denied and 
the denial affirmed on appeal. Held that is entitled to an 
award of priority. 

Keth & Tamplin v. Ohmer, 1906 C. D. 1, 120 0. G. 323. 
A decision refusing to enter judgment on the record is not 
reviewable on an interlocutory appeal. 

Mulligan v. Tempest Salve Co., 1905 C. D. 530, 119 0. 
G. 1924. 
Under applicant's allegation of conception of invention in 
November, 1901, he is privileged, if he can, to establish con- 
ception of invention prior to Kovember 16, 1901, the date on 
which Strouble filed his application. It is therefore seen that 
the statement filed by W does not fail to overcome the prima 
facie case made by Strouble's date of application. 

Winsor v. Strouble, 1904 C. D. 158, 110 0. G. 600. 
A showing to obtain an extension of time must necessarily 
be a verified one. 

Kletzker & Goesel v. Dodson, 1904 C. D. 100, 109 0. 
G. 1336. 
The original of a divided application fixes the date of filing, 
filing. 

Gilbert Stringer v. Johnson, 1903 C. D. 20, 102 0. G. 

621. 

A judgment upon the record set aside in order to redeclare 

the interference with a prior application of the defeated party 

from which the conflicting claims had been eliminated. In 

asserting a legal right motives are immaterial. 

Thorp V. White, 1900 C. D. 66, 91 0. G. 1435. 
Showing not required if suitable motion is made under 
Eule 122. 

Law V. Wolf, 1891 C. D. 91, 55 0. G. 1527. 
It is not the practice to issue an order to show cause. 
Kendall v. Frasch, 1890 C. D. 36, 50 0. G. 1132. 
An earlier application, in order to entitle a junior party to 
judgment on the record, must be upon its face an application 
in behalf of the same person who filed the application Imme- 
diately in interference. 

Oliver v. Everett, 1889 C. D. 214, 49 0. G. 731. 
Eule 107 is based on Eule 111. The motion to adjudicate 
the case upon the record under this rule is in the nature of 
a demurrer to the declaration, and calls up the case for deci- 
sion upon the pleadings. The objection that the prior appli- 
cant has not reduced the invention to a practical form is not 



Rule 115 FAILURE TO FILE TESTIMONY. 444 

good if the specification and drawings show the invention to 
be capable of being put into a practical machine. 

Starr & Peyton v. Farmer, 1883 C. D. 34, 23 0. G. 2325 ; 

affirmed by Secretary, 23 0. G. 2327. 

A preliminary statement alleging a date of invention, 1872, 

does not overcome the prima facie case made by the date of 

application for a patent filed January 4, 1873, as a division 

of an application filed July 12, 1871. 

Huntley v. Smith, 1880 C. D. 182, 18 0. G. 795. 
No notice to adverse parties is required in cases under this 
rule. 

Booth V. Lyman, 1880 C. D. 62, 17 0. G. 393. 
Where default is made a new hearing will be more readily 
granted. 

Loriug V. Hall, 1879 C. D. 8, 15 0. G. 471. 
It was no excuse for a patentee for not filing his prelimi- 
nary statement, that he was waiting to obtain as much infor- 
mation of applicant's invention as the applicant had of his. 
This information should be refused by the Office. 

Spaulding & Aldrich v. Winchester, 1871 C. D. 94. 

Additional Cases. 

Cases that pass on the subject matter of this rule : 

Benger v. Burson, 1902 C. D. 164, 99 0. G. 1384; Patten 
V. Wiesenfeld, 1902 C. D. 197, 99 0. G. 2547; Patten 
V. Wiesenfeld, 1902 C. D. 114, 98 0. G. 2589; Brough 
V. Snvder, 1901 C. D. 3, 94 0. G. 221; Meyer v. Sar- 
fert, 1901 C. D. 91, 96 0. G. 1037; Bundy v. Eum- 
barger, 1900 C. D. 143, 92 0. G. 2003; Forbes v. 
Thomson, 1890 C. D. 61, 51 0. G. 297. 

Rule 115. Failure to File Testimony Excluding Set- 
ting up Invention Prior to Application Date. 

If a party to an interference fail to file a statement, 
testimony will not be received subsequently from him 
to prove that he made the invention at a date prior to 
his application. 

See Eule 53 of 1871 quoted under Rule 110. 

Rule 116. Presumption as to Order of Invention. 

The parties to an interference will be presumed 
to have made the invention in the chronological order 



445 PKESUMPTION AS TO ORDEE OF INVENTION. Rule 11(5 

in which they filed their completed applications for 
patents clearly disclosing the invention; and the bur- 
den of proof will rest upon the party who shall seek 
to establish a different state of facts. 

HISTORY. 

Eule 56 of 1869 reads in part as follows : "In case of 
interference the party who first filed his application for a 
patent Mali be deemed the first inventor in the absence of all 
proof to the contrary." 

In 1870, inserted the words '"'so much of" between "his" 
and "filed" and the words "as illustrates his invention" be- 
tween "patent" and "will." 

In 1878, instead of "as illustrates his invention" the words 
"as is required by Eule 7" were used. 

Eule 111 of 1879, see appendix. 

The wording of the present rule is in the edition of Sep- 
tember 1, 1880. 

In 1892, instead of "filed" the words "claimed the same in" 
were used. The present wording restored June 18, 1897. 

See notes under Eule 122, title "Shifting Burden of Proof." 
Also as to filing date, Eules 31 and 171. 

CONSTRUCTIONS. 

(1) BuRDE>r OF Proof — Eecord Date. 

(2) Clearness Eequired. 

(3) Divisional Application. 

(4) Abandoned Application. 

(5) Forfeited Applications. 

(6) Amendments. 

(7) Foreign Patents. 

(1) Burden of Proof — Record Bate. 

A sole application may be a continuation of a joint 
application. 

In re Eoberts, 273 0. G. 410. 

Mechanical application does not give a record date to a 
design application. 

McArthur v. Gilbert, 1904 C. D. 245, 110 0. G. 2509; 
see also Lowrie v. Taylor et al., 186 0. G. 1681. 
The question of shifting the burden of proof is a matter 
within the jurisdiction of the Examiner of Interferences and 
not the Primary Examiner, and there is no appeal from his 
decision prior to final judgment. (Eaulet & Mcholson v. 
Adams, 114 0. G. 1827.) 

Scott V. Southgate, 1906 C. D. 104, 121 0. G. 689. 



Rule 116 PEESUMPTION AS TO OEDER OF INVENTIOIST, 446 

A petition that a divisional application be substituted for 
the original application in interference and that an amend- 
ment be entered in the original case to eliminate the inter- 
fering subject matter and put the case in condition, for allow- 
ance granted. 

The question whether the claims are patentable over the 
issue is one for the Primary Examiner. 

Burchart v. Nolan & Wright v. Christianaeu, 180 0. 
G. 601. 

We must consider then the claim in issue as properly relat- 
ing back to the filing of the original specification, and that 
date as the date of reduction to practice. 

McFarland v. Watson and Watson, 146 0. G. 257. 

The rule which permits a divisional application to relate 
back to the filing date subject-matter as long as it remains 
open in the Patent Office is a very liberal one that sometimes 
works hardship upon intermediate inventors and it ought not 
to be extended to cases not clearly within it, as where a 
patent has issued on the first application. 

Spitteler, 134 0. G. 1399; Wainwright v. Parker, 142 
0. G. 1115. 

Where a patent is inadvertently issued while an application 
by another is pending without, an interference, no advantage 
accrues, to the patentee on the question of burden of proof. 
Cutler V. Lenard, 136 0. G. 439. 

A divisional application dates back to the original one and 
secures to the applicant the benefit of a constructively reduc- 
tion to practice whetlier the claims of the divisional applica- 
tion were in the original when filed or not. 
Lotz V. Kenny, 135 0. G. 1801. 

The invention was embraced in the claims of the original 
application, and therefore no rights have become vested in 
later inventors which stop ISTewman from making these claims. 
(McBirly v. Cook, 1900 C. D. 248, 90 0. G. 2295.) 
Hopkins v. Newman, 131 0. G. 1161. 

Part of claims w6re in former application, the burden of 
proof different as to these claims. 

Bliss V. McElrery, 128 0. G. 458. 

The alleged improper placing of the burden of proof forms 
no proper basis for motion for dissolution and that the ques- 
tion should be presented by separate motion to shift the 
burden of proof. 

Blackmore v. Hall, 118 0. G. 2538, -1905 C. D. 456. 

Under the practice announced in Eaulet & Nicholson v. 
Adams (114 0. G, 1827), the question of shifting the burden 



447 PRESUMPTION AS TO ORDER OF INVENTION". Kule 116 

of proof is a matter to be considered and decided by the 
Examiner of Interferences and is not appealable prior to the 
final decision in the case. 

Duryea & White v. Eice, 118 0. G. 2249, 1905 C. D. 428. 

Where an appeal was taken from the action of the Primary 
Examiner denying a motion to shift the burden of proof, the 
appeal not considered and case remanded to Examiner of 
Interferences. Head note to 

Eisher v. Daugherty, 118 0. G. 1681, 1905 C. D. 399. 

Opinion does not seem to bear out head note. 

As a general rule, the burden of proof rests on the party 
against whom judgment would be rendered if no evidence 
were adduced on either side. This question, involving the 
taking of testimony, should be considered by the Examiner 
of Interferences and there is no appeal from his decision 
prior to the final appeal. 

Fennell v. Brown v. Borsch, Jr., 115 0. G. 1328, 1905 

C. D. 117. 

Claimed that tlie invention was not shown in original 
application, but was introduced by amendment subsequent to 
the filing of opponent's application, "If well founded, this 
would entitle S, who was the first to conceive, the benefit, 
also, of the earlier reduction to practice, and an inquiry into 
the question of diligence would be unnecessary." 

Seeberger v. Dodge, 114 0. G. 2382, 1905 C. D. 603, 24 
App. D. C. 476. 
As held in the case of Eaulet & Nicholson v. Adams (114 
0. G. 1827), no appeal will be entertained upon interlocutory 
motion relating to the burden of proof, but that the matter 
may be brought up with the final decision as to priority of 
invention. Such motions should be made before the Exam- 
iner of Interferences. 

Osborne v. Armstrong, 114 0. G. 2091, 1905 C. D. 65. 
A previous application which does not show all the ele- 
ments of the issue can not avail to shift the burden of proof. 
Norden v. Spaulding, 114 0. G. 1829, 1905 C. D. 588, 
24 App. D. C. 286. 
Motions to shift the burden of proof should be made before 
the Examiner of Interferences within the twenty days after 
the approval of the preliminary statements allowed for mo- 
tions. This case withdraws jurisdiction from the Primary 
Examiner in this class of cases. 

Eaulet & Nicholson v. Adams, 114 0. G. 1827, 1905 C. 

D. 55. 

Said by Commissioner on Appeal. Before the interference 



Rule 116 PEESUMPTION AS TO ORDER OF INVENTION. 448 

proceeds further, it should be positively determined whether 
or not these new references anticipate the issue. 

Wright & Stebbins v. Hansen, 114 0. G. 761, 1905 C. D. 
27. 
Motions to shift the burden of proof are brought under the 
provisions of Eule 116. In a proper case the burden of proof 
can be shifted without dissolving and redeclaring the inter- 
ference. 

Dinkel v. D'Alier, 113 0. G. 2507, 1904 C. D. 572. 
The pendency of a motion for dissolution is no good reason 
for delay in bringing a motion to shift the burden of proof. 
(See McArthur v. Gilbert, 111 0. G. 1624.) 

Harvey v. Lubbers v. Easpillaire, 112 0. G. 1215, 1904 
C. D. 411. 
F's patent does not make him the senior party in the pro- 
ceeding, as D was the first to file an application, he is the 
senior party in this proceeding, and it is incumbent upon F 
in order to prevail to establish his case by a preponderance 
of evidence. 

Furman v. Dean, 111 0. G. 1366, 1904 C. D. 305. 
When an error is discovered by the Examiner of Interfer- 
ences which would amount to such an irregularity as would 
preclude proper determination of the question of priority, 
such as the improper placing of the burden of proof, the in- 
terference should be forwarded to the Primary Examiner with 
a statement of facts, that he may correct his letter forwarded 
to the Examiner of Interferences imder Eule 97. 
Lutz V. Lewis, 110 0. G. 2014, 1904 C. D. 227. 
A subsisting patent lawfully issued can not be invalidated 
or in any manner effected by any subsequent proceeding in 
the Patent Office even to the extent of imposing the burden 
of proof upon its holder that it was lawfully issued. 
Lutz V. Lewis, 110 0. G. 2014, 1904 C. D. 227. 
The date of invention can not be carried back to a previous 
joint invention. 

Arnold v. Vaughen et al. v. Arnold et al., 109 0. G. 805, 

1904 C. D. 78; Haskell v. Miner v. Ball, 109 0. G. 

3170, 1904 C. D. 131. 

This rule is applicable, notwithstanding the fact that a 

patent was inadvertently issued to the junior party without 

an interference. 

Watson v. Thomas, 106 0. G. 1777, 1903 C. D. 370. 
The burden of proof is upon the junior party to show that 
he was diligent. 

Pihl V. Mersman, 106 0. G. 1777. 



449 PRESUMPTION AS TO ORDER OF INVENTION. Rule 116 

As Ostrom is entitled to his filing date as his date of re- 
duction to practice and as Quest was wholly inactive at this 
time, Ostrom is entitled to priority. 

Quest V. Ostrom, 106 0. G. 1501, 1903 C. D. 348. 
An application for a patent when filed complete in the 
Patent Office which warrants the issue of a patent and is not 
abandoned, is in law a constructive reduction to practice. 
Before it is filed it may be only evidence of conception. 
Hopfelt V. Eead, 106 0. G. 768, 1903 C. D. 319. 
If one wishes to establish the date of filing of an earlier 
application he should do so by a motion to shift the burden 
of proof, in which case the decision of the Primary Examiner 
as to the admission of claims will be final. If such earlier 
application is brought in the course of taking the testimony 
it will be considered like other testimony by all the tribunals 
having jurisdiction. 

Eobinson v. Copeland, 102 0. G. 466, 1903 C. D. 13. 
Between two applicants one may have the benefit of the 
date of filing a previous application, but between an applicant 
and a patentee the rule is modified. A subsisting patent law- 
fully issued, can not be invalidated or in any manner affected 
by 'any subsequent proceeding in the Patent Office, even to 
the extent of imposing the burden of proof upon its holder 
that it was lawfullv issued. 

Asencio v. Eussell, 99 0. G. 2321, 1902 C. D. 188. 
The words "their completed applications" are not limited 
to mean only the applications involved in the interferences 
nor those pending concurrently thereupon. They refer to 
any completed application in which the invention is disclosed 
by means of which Judgment of priority would necessarily 
be rendered in favor of the party so disclosing, provided no 
testimonv at all (Eule 114) or no more testimony were taken. 
Meyfer v. Sarfert, 96 0. G. 1037, 1901 C. D. 91. 
Motion to shift need not set up facts unless they are out- 
side the record. 

Sheppard v. Webb, 94 0. G. 1577, 1901 C. D. 32. 
A reissue application is entitled to the date of the original 
application. 

Walsh V. Hallbauer, 88 0.. G. 2409, 1899 C. D. 184; 
Austin V. Johnson, 95 0. G. 2585, 1901 C. D. 391, 18 
App. D. C. 83. 
A motion to shift, the burden of proof may be founded 
upon matters outside of the record. 

Bundy V. Eumbarger, 92 0. G. 2001, 1900 C. D. 143. 



Rule 116 PRESUMPTION AS TO OEDER OF INVENTION. 450 

The first to make a claim in substance and effect covering 
the invention is the senior party. 

Eichards v. Leidgen, 77 0. G. 153, 1896 C. D. 63. 
The word "claimed" does not include the description. 

Edison v. Ball, 71 0. G. 1313, 1895 C. D. 811. 
As recently amended and construed in the light of decisions 
Jaearing upon it, means that he who first made a claim of 
statement of invention covering the invention in interference 
should be considered the senior partv. 

Huson V. Crowell v. Yale, 64 0. G. 1006, 1893 C. D. 107. 

Held on appeal that as the applicant disclosed, but did not 

claim the invention in controversy in an application anti- 

dating his opponent's earliest claimed date, the office must 

consider this in determining the question of priority. 

O'Shaughnessy v. VanDepolle, 62 0. G. 1063, 1893 C. D. 
19. 
The date on which each applicant made his claim or equiva- 
lent statement of invention for the subject-matter involved 
in the interference issue determines his status. 

Kennyson v. Merritt, 1893 C. D. 54; 58 0. G. 1415.. 
Burden of proof when originality denied. 

Wherry v. Heck, 1889 C. D. 201, 49 0. G. 559. 
To take back the record date to a former application, or 
to other records in the patent office, there must be something 
in the application in question identifying it with such records. 
Booth V. Lyman, 1880 C. D. 151, 18 0. G. 132 ; Huntley 
V. Smith, 1880 C. D. 182, 18 0. G. 795. 
Priority of invention, under rule 107 is determined prima 
facie as between two original applications by the dates of 
filing the applications; as between an original pending appli- 
cation and one or more patents by the date of filing the 
pending application, and the application on which the patents 
were granted; as between a pending reissue applica'tion and 
one or more unexpired patents by the date of filing the 
original application for the patent of which a reissue is asked 
and the application upon which the other patents were granted. 
Booth V. Lyman, 1880 C. D. 62, 17 0. G. 393. 
Date of filing, or perhaps date of jurat should be assumed 
as the date of invention in absence of other proof. 
Knight V. Annan, 1871 C. D. 34. 
Cases that pass on the subject-matter of this rule. 

McGill V. Adams, 119 0. G. 1259;. Byron v. Henry, 104 
0. G. 1895; Brough v. Snyder, 1901 G. D. 1, 94 0. 
G. 221; Osborne v. Hotsapillar, 1901 C. B. 16, 94 0. 
G. 583 ; Oliver v. Everitt, 1889 S. D. 214, 49 0. G. 731. 



451 PEESUMPTION AS TO ORDER OF INVENTION. Rule 116 

(2) Clearness Required. 

An applicant should not be given the record date of an 
earlier application if there is reasonable doubt if it disclosed 
the issue. The Examiner's decision that the issue was not so 
disclosed raises a doubt and the -question should again be 
brought in question by introducing such earlier application in 
evidence instead of by appeal. 

Munroe v. Alexander, 1903 C. D. 334, 106 0. G. 1000. 
A claim suggested under rule 96 applicant did not insert it 
but made another application. Held that in view of the 
indistinctness upon the point in question of first application 
applicant could not have date of first application. 

Krakaw v. Harding, 1903 C. D. 264, 105 0. G. 1531. 
In the original application of which the one in controversy 
was a division the combination was not shown in the draw- 
ings as a unit but was described in the specification. Held 
sufiicient to establish the date. Even a disclaimer would not 
prevent this provided the claims were made in a later appli- 
cation. 

Dittigen v. Parmenter, 1902 C. D. 218, 99 0. G. 2966. 
What constitutes clearly illustrating and describing. 

Silverman v. Hendrickson, 1902 C. D. 527, 99 0. G. 1171, 
19 App. D. C. 381. 

( 3 ) Divisional Application. 

Date of original of a divisional application. 

Eobinson v. Seelinger, 1905 C. D. 640, 116 0. G. 1735, 
25 App. D. C. 237; Duryea & White v. Eice, Jr., 1907 
C. D. 28, 126 0. G. 1357, 28 App. D. C. 423. 
An applicant should not be given the record date of an 
earlier patent application when there is reasonable ground 
to refuse it, he may, however, introduce the earlier applica- 
tion as a part of his evidence and contend that it shows the 
invention. 

Greenwalt v. Marks, 1904 C. D. 352, 111 0. G. 2224. 
As it has been finally decided that the disclosure is sufficient 
in the divisional application to support the claims, it follows 
that the disclosure in the original application is sufficient. 
Hopfelt V. Eead, 1903 C. D. 319, 106 0. G. 767. 
If a divisional application also contains original matter it 
is a division of the former so far as it contains matter that 
was in the original but no further. 

Gilbert-Stringer v. Johnson, 1903 C. D. 20, 102 0. G. 621. 
Purpose of rule. Failure of junior party to bring motion 



Rule 116 PEESUMPTION AS TO OEDEE OF INVENTION. 452 

to .shift the burden of proof raises no presumption that his 
application is not a division of an earlier one. 

Phelps V. Hardy v. Gattman & Stern, 1896 C. D. 70, 
77 0. G. 631. 
When an application is filed describing and illustrating 
more than one invention, and during the pendency in the 
Office another application is filed by the same inventor, stating 
that it is a division of the original application and claiming 
an invention described and illustrated, the latter application 
is to be considered a divisional application for the purpose 
of interference proceedings, whether or not the divisional in- 
vention was claimed in the first application. It is to be 
noticed that this rule is entirely silent upon the subject of 
claiming the invention. 

Forbes v. Thomson, 1890. C. D. 61, 51 0. G. 297. 
Where an application is made clearly describing an in- 
vention but expressly disclaiming it with a view of making a 
second application for said invention, where the second appli- 
cation is put in interference the date of filing the first 
application is the date referred to by this rule. 

Sellen v. Hockhausen, 1885 C. D. 103, 33 0. G. 995. 

(4) Abandoned Applications. 

When an applicant files a complete application for a patent 
on a certain invention and thereafter files another applica- 
tion and allows the first to become abandoned, the applicant 
is entitled to his date of the first application for the date of 
his constructive reduction to practice for the invention which 
is common to the two applications. The effect is different 
if he permits the first application to become abandoned before 
he files the second one; but when the two applications are 
pending together the applicant has the benefit of the first 
date of filing for a constructive reduction to practice as the 
whole constitutes one continuous proceeding. 

Lotterhand v. Hanson, 1904 C. D. 39, 108 0. G. 799. ' 
An abandoned application gives the date of conception. 
Silverman v. Hendrickson, 1902 C. D. 527, 99 0. G. 1171, 
19 App. D. C. 381. 
An abandoned application does not establish a date of re- 
duction to practice, it is only evidence of conception. 

Cartv V. Kellogg, 1896 C. D. 188, 74 0. G. 657, 7 App. 
D.''C. 542. 
The original of a divisional application is the one to fix . 
the date under this rule, but an abandoned application cannot 
be used for that purpose. 

Henderson v. Eeese, 1883 C. D. 67, 25 0. G. 191. 



453 PKESUMPTioisr as to ordek of invention. Rule 116 

(5) Forfeited Applications. 

Where an applicant has made a previous application in 
which he might have made the claims, this is sufficient to 
establish the date. Query if case was abanadoned for non- 
pavment of final fee. 

Lowry V. Spoon, 1904 C. D. 173, 110 0. G. 858. 

Where one party has been at fault in causing an application 
to become forfeited, he cannot be permitted to take advan- 
tage of that fact. (Christensen v. Noyes, 99 0. G. 227 dis- 
tinguished.) 

Eussell V. Asencio, 1904 C. D. 106, 109 0- G. 1605. 

Where an application is abandoned by a failure to pay the 
final fee within six months after allowance, and a renewal 
application is filed within two years after the allowance of 
the first application, the date of the first application is to 

np \f\ K PT1 

Thomson v. Waterhouse, 1885 C. D. 2, 30 0. G. 177. 

(6) Amendments. 

These amendments were made prior to the time appellant 
entered the field, and the rule in this instances is far more 
liberal than where it is sought to enlarge the scope of an 
application to the prejudice of inventors whose rights have 
accrued between the date of filing and the date of amend- 
ment. 

Young V. Struble, 157 0. G. 488. 

Where the invention was caused to appear in a party's 
patent by an amendment to the application improperly ex- 
tending the original disclosure. Held that the patent is not 
evidence of invention by the patentee at any time, as the 
matter in question is not supported by oath stating that it 
was invented bv him. 

Pohle V. McKnight, 1905 C. D. 549, 119 0. G. 2519. 

A motion to shift the burden of proof because the inven- 
tion in issue was introduced by amendment is improper. The 
remedv is by motion to dissolve under rule 122. 

Tripp V. WolS V. Jones, 1903 C. D. 141. 103 0. G. 2171. 

An amendment is entitled to the date of filing. 

Walsh V. Hallbauer, LS99 C. D. 184, 88 0. G. 2409. 

Where a new invention is introduced by amendment, such 
amendment fixes the date of invention. 

Hull V. Lowden, 1881 C. D. 30. 20 0. G. 741. 



Rule 117 STATEMENT OP EVIDENCE. 454 

(7) Foreign Patents. 

Even where a party secures for his application here the 
benefit of the filing date of a foreign application, the actual 
filing date in this country must appear and cannot be changed 
to the foreign filing date. 

Pauling, 1905 C. D. 131, 115 0. G. 1848. 
An ex parte affidavit is not sufficient to change the burden 
of proof by carrying back a party's filing date to that of a 
foreign application. 

Eaulet V. Nicholson v. Adams, 1905 C. D. 55, 114 0. G. 
1837. 
If the application is filed over 12 months after foreign ap- 
plication, applicant cannot have the benefit of the foreign 
filing date. 

Muller V. Lauber, 1903 C. D. 387, 106 C. D. 3016. 

Rule 117. Statement not Evidence. 

The preliminary statement can in no case be used 
as evidence in behalf of the party making it. 

CONSTRUCTIONS. 

Even after amendment the original statement remains a 
part of the case, with its full effect under this rule. 

Foster & Poster v. Bent, 1896 C. D. 89, 77 0. G. 1781. 

Rule 118. Time for Taking Testimony. 

Times will be assigned in which the junior appli- 
cant shall complete his testimony in chief, and in 
which the other party shall complete the testimony 
on his side, and a further time in which the junior 
applicant may take rebutting testimony; but he shall 
take no other testimony. If there be more than two 
parties to the interference, the times for taking tes- 
timony will be so arranged that each shall have an 
opportunity to prove his case against prior appli- 
cants and to rebut their evidence, and also to meet 
the evidence of junior applicants. 



455 TIME FOE TAKING TESTIMONY. RuIg 118 

CONSTRUCTIONS. 

Surrebuttal testimony on the subject of opera ti veness ? 

Keith et al. v. Lundquist v. Lorimer et al., 157 0. Gr. 754. 

Where an inventor testifies in favor of the opponent of 

his assignee that he was not the inventor of a part of the 

alleged invention it constitutes a surprise and a motion to 

take surrebuttal should be allowed. 

Sandage V. Dean v. Wright v. McKenzie, 130 0. G. 981. 
A mere difference of opinion will not warrant rebuttal 
testimony. 

Sandage v. Dean v. Wright v. McKenzie, 130 0. G-. 981. 
Testimony attacking the validity of the senior party's 
date of filing should be taken in the examination in chief 
and not in rebuttal. 

Kinsman v. Strohm, 125 0. G. 1699. 
Surrebuttal testimony will not be authorized merely that 
a party may strengthen his case upon finding that the case 
made out against him in his opponent's rebuttal testimony is 
stronger than he anticipated. 

Herbst v. Eecord & Goldsborough v. The Eothenberg Co., 

123 0. G. 2311. 

Surrebuttal testimony should only be accepted from a party 

where new matter is introduced in his opponents proof, which 

is in the nature of a surprise to the party seeking surrebuttal 

proofs. 

Marani v. Shoemaker v. Fessenden, 121 0. Gr. 2666. 
Eebuttal testimony which related solely to the patentability 
of the issue, held to have been properly stricken out. 
Parkes v. Lewis, 120 0. G. 323. 
This Office has authority to make an order to perpetuate 
testimony by analogy to the practice in equity courts, and 
the circumstances here justify it. 

Dowry v. Spoon, 117 0. G. 903. 
It is very clear that Hull has simply changed his mind or 
received new light upon the law of the case and has not dis- 
covered any new facts which would warrant reopening a de- 
cided case. 

Hull V. McGill, 117 0. G. 597. 
Basch alleges conception prior to this date; but this 
testimony was taken within the time set for the taking of 
rebuttal testimony, and as such testimony is a part of his 
prima facie case and is not in rebuttal of any testimony taken 
by Hammond it clearly is improperly introduced and is en- 
titled to no weight. 

Basch V. Hammond, 113 0. Gr. 552. 



Rule 119 FAILURE TO TAKE TESTIMONY. 456 

Priority and originality are the only issues. Eebutting 
testimony relating to patentability stricken out. 

Huber v. Aiken, 1899 C. D. 166, 88 0. G. 1525. 
This rule cannot be disregarded by stipulation of parties, 
and its provisions should be rigidly enforced. Testimony 
taken in violation of this rule must be excluded. 

Connor v. Williams, 1878 C. D. 137, 15 0. G. 387. 
A case that passes on the subject-matter of this rule. 

See Chesebrough v. Toppan, 1873 C. D. 100. 
Unless the established rules of the Ofl&ce are enforced the 
rights of the contestants will never be secured. Testimony 
taken in conflict with this rule excluded. 

l^eal & Adams v. Daniels, 1871 C. D. 156. 

Rule 119. Failure to Take Testimony. 

Upon the filing of an affidavit by any senior party 
to an interference that the time for taking testimony 
on behalf of any junior party has expired and that no 
testimony has been taken by him, an order shall be 
entered that the junior party show cause within a 
time set therein, not less than ten days, why judg- 
ment should not be rendered against him, and in the 
absence of a showing of good and sufficient cause 
judgment shall be so rendered. If any showing be 
made in response to the order, it must be served upon 
the opposing party and noticed for hearing by the 
party filing it. 

CONSTRUCTIONS. 

Affidavits accompanied motion for judgment on the record. 
It is clearly improper for counsel to request this Office to 
decide the question of priority on ex parte affidavits. 
Horfnagie v. Beardsley, 193 0. G. 510. 

If there were good reasons why judgment should not have 
been residered on the question of priority under this rule, 
he should have brought them forward in answer to the order 
to show cause. If he was dissatisfied with the judgment which 
was rendered, his remedy was by appeal from the judgment. 
He cannot have that judgment reviewed on appeal from the 
order to show cause. 

Bombard v. United States Graphite Co., 129 0. G. 479. 



457 POSTPONEMENT OF HEARING. Rule 120 

A stipulation filed in lieu of testimony in which one of the 
two parties states that he is not the inventor of the subject- 
matter in issue, there is no reason for continuing the inter- 
ference, and the Examiner may render judgment without 
setting a day for hearing. 

Townsend v. Corey, 119 0. G. 3337. 
If there were good reasons why judgment should not be 
rendered against McHarg, he should have brought them for- 
ward in answer to the order to show cause. 

McHarg v. Schmidt et al., 106 0. G. 1780. 
If the testimony relates exclusively to public use it should 
be stricken out upon motion properly made and judgment 
rendered under this rule. 

Stroud V. Miller, 101 0. G. 2075, 1903 C. D. 433. 
The date of the decision and not the date of the receipt 
of notice governs. 

Whipple V. Sharp, 98 0. G. 335-6, 1903 C. D. 3, 5. 
Cases that pass on the subject-matter of this rule. 

Osborn v. Austin,' 115 0. G. 1065; Trufant v. Prindle v. 
Brown, 111 0. G. 1035; Kempshall v. Sieberling, 110 
0. G. 1437; Winsor v. Struble, 110 0. G. 600; Hoegh 
V. Gordon, 108 0. G. 797; Franklin v. Morton v. 
Cooley, 95 0. G. 3063, 1901 C. D. 49; Atkins v. Paul 
V. Johnson, 94 0. G. 1785, 1901 C. D. 35; Walsh v. 
Hallbauer, 94 0. G. 333, 1901 C. D. 9; Brough v. 
Snyder, 94 0. G. 331, 1901 C. D. 3; Knight v. Bag- 
nail V. Curtis V. Morgan, 76 0. G. 1115, 1896 C. D. 109. 

Rule 120. Postponement of Hearing. 

If either party desire to have the hearing contin- 
ued, he shall make application for such postponement 
by motion (see Rule 153), and shall show sufficient 
reason therefor by affidavit. 

CONSTRUCTIONS, 

If party has not been diligent no extension of time will 
be permitted. 

Bryon v. Henry, 104 0. G. 1895. 
The fact that the title of one of the parties is in litigation 
is not sufficient ground for the postponement of the hearing; 
either to await the determination of the question of title or 
to make the hearing coincident with another interference 
proceeding in which the same patent is involved. 
Keith V. Faure, 35 0. G. 389, 1883 C. D. 73. 



Rule 121 ENLAHGEMENT OF TIME FOR TESTIMONY. 458 

A case that passes on the subject-matter of this rule. 
Olemkley v. Biekhius, 158 0. G. 886. 

Rule 121. Enlargement of Time for Taking Testimony. 

If either party desire an extension of the time as- 
signed to him for taking testimony, he shall make ap- 
plication therefor, as provided in Rule 154(6^). 

See notes to rule 114. 

CONSTRUCTIONS. 

The setting of times for taking testimony is a matter 
peculiarly within the descretion of the Office. 

Victor Talking Machine Co. v. American Graphophone 
Co., 161 0. G. 753. 
It must appear that the motion is made in good faith and 
if there has been delay it must be excused. A prima facie 
case must be made out. 

Eoffe V. Super, 159 0. G. 991. 
An order extending time cannot be appealed from. 

Wickers and Parlong v. Weinwarm, 129 0. G. 2501. 
An appeal should be allowed where permission to take 
testimony is refused. 

Pym V. Hadaway, 128 0. G. 457. 
Decisions of the Examiner of Interferences are final on 
motions to extend time for taking testimony, and no limit of 
appeal should be set. 

Christensen v. McKenzie, 117 0. G. 277. 
It is believed that it will be to the interest of all parties 
concerned, if the Examiner of Interferences in granting 
motions for extension of time for taking testimony should not 
set a limit of appeal from such decision. 
Goodfellow V. Jolly, 115 0. G. 1064. 
Three weeks delay in moving the court to compel witness 
to answer is sufficient reason for denial of motion to extend 
time for this cause. 

Downing v. Anderson, 111 0. G. 582. 
A third extension refused where petitioner was waiting for 
such time as he could get all his witnesses together at once. 
Spindler v. Nathan & Bolge, 109 0. G. 2171. 
The office will not fix the time for taking testimony so 
that the testimony may be taken in both cases at once. 
Lipe V. Miller, 107 0. G. 1662. 



459 MOTION TO DISSOLVE. E-ule 122 

The motion should be made before the expiration of the 
time limit. It should be accompanied by affidavits setting 
forth good reasons. 

Turner v. Bensinger, 102 0. G. 1551. 
Time for taking testimony will not be extended to permit 
testimony to be offered which is inadmissible in its nature. 
Trufant v. Prindle v. Brown, 101 0. G. 1608, 1902 C. 
D. 397. 
A stipulation for extending time for taking testimony 
which contemplates the absence of one of the attorneys may 
act to prevent the running of the 20 day provided for by rule 
122. 

McKean v. Morse, 94 0. G. 1572, 1901 C. D. 33. 
See Sponsel v. Darling, 105 0. G .498. 

Rule 122. Motion to Dissolve for Irregularity, Non- 
patentability, etc. 

Motions to dissolve an interference (1) alleging 
that there has been such informality in declaring the 
same as will preclude the proper determination of the 
question of priority of invention, or (2) denying the 
patentability of an applicant's claim, or (3) denying 
his right to make the claim, should contain a full 
statement of the grounds relied upon and should, if 
possible, be made not later than the thirtieth day after 
the statements of the parties have been received and 
approved. Such motions and all motions of a similar 
character, if in the opinion of the Commissioner they 
be in proper form, will be heard and determined by 
the law examiner, due notice of the day of hearing 
being given by the ofiSce to all parties. If in the 
opinion of the Commissioner the motion be not in 
proper form, or if it be not brought within the time 
specified and no satisfactory reason be given for the 
delay, it will not be considered and the parties will 
be so notified. 

When the motion has been decided bv the law ex- 



Rule 122 MOTION to dissolve. 460 

aminer the files and papers, with his decision, will be 
sent at once to the docket clerk. 

Motions to shift the burden of proof should be made 
before, and will be determined by, the examiner of 
interferences. No appeal from the decision on such 
motions will be entertained, but the matter may be 
reviewed on appeal from the final decision upon the 
question of priority of invention. 

HISTORY. 

The Eevision of December 1, 1879, reads as follows : 

"116. Motions to dissolve an interference which deny the 
patentability of an applicant's claim, or his right to make 
the claim, will be submitted to the examiner of interferences 
before the day fixed for filing the statements provided for in 
Eules 97 and 102, and will be transmitted by him, with the 
files and papers, to the primary examiner, who will take 
jurisdiction of the case for the determination of such motions, 
and will return the files and papers to the examiner of in- 
terferences, with his decision, at the expiration of the time 
limited for appeal, if no appeal shall have been taken, or 
sooner if the party entitled to appeal shall file a waiver in 
writing of his right of appeal; and such decision will be 
binding on the examiner of interferences unless reversed or 
modified on appeal. From a decision of the primary exam- 
iner on such motion denying the patentability of a claim or 
the right of an applicant to make it, an appeal may be taken 
ex parte to the examiners-in-chief; but from his decision 
affirming its patentability or the applicant's right no appeal 
can be taken." 

"118. Appeal may be taken directly to the commissioner 
from decisions on all motions, except motions to dissolve in- 
terferences denying the patentability of applicant's claims, or 
their right to make the claims, and other lawful motions in- 
volving the merits of the case, which, when appealable may 
be appealed to the board of the examiners-in-chief. (See 
Eule 116.)" 

See Allen, Commissioner of Patents v. The United States 
of America, ex rel. Lowry and Planters Compress 
Company, 1905 C. D. 643, 116 0. G. 3253 (May 24, 
1895). 

Previous to the last revision, the rule read as follows : 



461 MOTION TO DISSOLVE. RuIg 122 

« 

Motions to dissolve an interference (1) upon the ground- 
that there has been such informality in declaring the same 
as will preclude a proper determination of the question of 
priority of invention, or (2) which deny the patentability of 
an applicant's claim, or (3) which deny his right to make the 
claim, or (4) which allege that counts of the issue have 
different meanings in the cases of different parties should 
contain a full statement of the grounds relied upon, and 
should, if possible, be made not later than the thirtieth day 
after the statements of the parties have been received and 
approved. Such motions, and all motions of a similar char- 
acter, should be accompanied by a motion to transmit the 
same to the primary examiner, and such motion to transmit 
should be noticed for hearing upon a day certain before the 
examiner of interferences. When in proper form the motion 
presented will be transmitted by the examiner of interferences, 
with the files and papers, to the proper primary examiner for 
his determination, who will thereupon fix a day certain when 
the said motion will be heard before him upon' the merits, 
and give notice thereof to all the parties. If a stay of pro- 
ceedings be desired, a motion therefor should accompany the 
motion ior transmission. 

When the motion has been decided by the primary ex- 
aminer the files and papers, with his decision, will be sent 
at once to the docket clerk. 

Motions to shift the burden of proof should be made be- 
fore, and will be determined by, the examiner of interferences. 
No appeal from the decision on such motions will be enter- 
tained, but the matter may be reviewed on appeal from the 
final decision upon the question of priority of invention. 

The following notes have references to this rule. The 
present rule has not been in force long enough to have been 
construed. 

CONSTRUCTIONS. 

(1) Ix Geneeal. 

(2) Geneeal Policy and Meaning of Eule. 

(3) Subject-Mattee of Motion. 

(4) Geound foe Dissolution. 

( 5 ) Patentee — Applicant. 

(6) FoEM OF Motion. 

(7) Teansmission of Motion. 

(8) Petition to Extend Time. 

( 9 ) Evidence — Affidavits. 



Rule 122 MOTION to dissolve. 462 

(10) Delay in Beinging Motion — Excuse for Second 

Motion. 

(11) Expediting Peoceedings — Examinee's Actions — Time 

Limit. 

(12) Geounds of Appeal. 

(13) Shifting Bueden of Peoof. 

(14) Miscellaneous. 

(1) In General. 

^ The practice under the present rule is to render judgment 
upon the opening of the preliminary statements, without 
an order to show cause why such award should not be made, 
leaving the party failing to prevail to bring any of the 
motions permitted by the rules within the time limited for 
appeal. 

Kendall v. Prasch, 1891 C. D. 36. 
It is contended by B. that under long standing practice 
he should be permitted to give notice of other references five 
days before the hearing of the motion. The reasons for this 
practice which was followed in the past, but which has not 
been permitted for some time, do not now exist. Since the 
date of the decisions under which an applicant was per- 
mitted to give notice five days before the hearing, of addi- 
tional reasons for dissolving the interferences, Eule 132 has 
been amended and the time within which motions may be 
made extended from twenty to thirty days. It has also been 
amended to require that a motion for dissolution must eon- 
tain a full statement of the grounds relied upon. 

Papendell v. Bunnell v. Eeizenstein v. Gaisman v. 
Gillett, 131 0. G. 362. 

(2) General Policy and Meaning of Eule. 

Last clause applies where judgment is rendered on the 
record under rule 114. 

Barney v. Hess, 158 0. G. 702. 
Last clause (authorities). 

Braun v. Wahl, 189 0. G. 254. 
The first ground mentioned while in a sense broad, is 
exclusive of the other three grounds. 
Eountree v. Sloan, 189 0. G. 1282. 
The practice of the Office contemplates that the question of 
the patentability of the subject-matter of an interference 
should be decided before an interference is declared. But 



463 MOTION TO DISSOLVE. Rule 122 

if it has not been, then it must be before the interference 
can go on. 

Lynch & Eaff v. Dryden & Underwood, 73 C. D. 73. 
There is nothing in the rules that limits the question to 
be discussed upon a motion to dissolve to those which have 
not previously been considered by the Primary Examiner. 
Law V. Woolf, 55 0. G. 1527. 
One object of motion is to enable the Examiner to decide 
inter partes what he had previously decided without a hearing. 
Law V. Woolf, 1891 C. D. 91; 55 0. G. 1527. 
Motions must be made after the declaration of interference. 

Seevert v. Shuman, 76 0. G. 1714. 
Matters relating to marking can only be established by 
evidence. The motion not transmitted. 
Earll V. Love, 140 0. G. 1209. 
A motion to dissolve on the ground that the issue is not 
patentable will not be considered where based upon ex parte 
affidavits. 

Barrett v. Swinglehurst, 144 0. G. 818 ; White v. Powell, 
160 0. G. 776. 
The additional patent which is now cited by White is in 
the same art as the patents previously considered and was 
presumably within his knowledge at the time the original 
motion was brought. It is well settled that such delay is 
fatal to a motion to dissolve. McKee v. Baker, 120 0. G. 
657; Josleyn v. Hulse, 130 0. G. 1689. 

Blackmore v. Hall, 132 0. G. 1587; White v. Powell, 
160 0. G. 776. 
If a disclaimer has been filed, or there' is no subject-matter, 
the interference should be dissolved. 
Jones, 180 0. G. 880. 
When an interference has been dissolved as to a part of the 
counts, a new preliminary statement will not be admitted as 
to the remainder. 

Seaman v. Brooks, 100 0. G. 685. 
The absurdity of a declaration of interference with a reser- 
vation at the same time of the question of patentability for 
future adjudication, would be, so far at least as this count 
is concerned, too glaring to be tolerated. 

Such questions should be referred for determination. 

Oliver v. Felbel, 100 0. G. 2384. 
If a motion to dissolve for want of interference in fact 
is not made, the decision of the interference is not conclusive 
on this point, and the defeated party may raise the question 



Rule 122 MOTION to dissolve. 464 

when his competitors' patent is cited as a reference. 
Schupphaus, 100 0. G. 2775. 

There may be an interference in fact notwithstanding the 
devices are intended for different purposes. 
Blue V. Power v. Owen, 101 0. G. 2076. 

If a motion to dissolve because one applicant is not en- 
titled to make the claim is not filed, the question cannot be 
considered on the final adjudication. 
Woods V. Waddell, 106 0. G. 2017. 

As stated in Maxwell v. Bryon v. Henry, 98 0. G. 1968, 
an interference should not continue between two parties as 
to certain counts and between three parties as to other 
counts. 

Dow V. Benson, 107 0. G. 1378. 

The differences in structure referred to, however are not 
included in the claims, and are, therefore, immaterial. 
Auerbach & Gubing & Wiswell, 108 0. G. 289-290. 

Dissolution is necessary only where the irregularity is 
such as will preclude a proper determination of the question 
of priority It is not necessary in all cases of irregularity. 
For instance, the fact that one applicant inserted a second 
specific claim in order to secure an interference is not 
material. 

Hoefer, Hoefer & Hoefer v. Barnes, 108 0. G. 560. 

Where the claims of interfering parties are in identical 

language and each party has a construction responding in 

function to the broad terms ^thereof, there is an interference 

in fact, although the constructions are specifically different. 

Gordon v. Wentworth, 120 0. G. 1165. 

Action should not be taken by the Office without sufficient 
reason where an adverse determination upon the merits of 
the patent may result; but where reasons for action exist 
the Office is not to be deterred therefrom because, as an 
incident thereto, a cloud may be cast upon a patent. 
Griffith V. Dodgson, 122" 0. G. 2064. 

No testimony as to inoperativeness, or public use, previous 
to motion to dissolve. 

Barber v. AA^ood, 127 0. G. 1991. 

Where claims have been suggested to an applicant and he 
makes the same under protest accompanying the protest 
with a statement that he does not believe that he has a 
risfht to make them, srivinff his reason for that statement, and 
where after inspecting the other parties application he still 
contends that he has no right to make them, he should be 
permitted to argue the question before the primary Examiner. 



465 MOTION TO DISSOLVE. RuIg 122 

The practice announced in Miller v. Perham, 121 0. G. 2667, 
is modified to this extent, 129 0. G. 3161. 

Eichelberger and Hibner v. Dillen, 129 0. G. 3161. 
The Office has found by experience that in order to properly 
transact business the questions which are sought to be 
raised by applicants appearing before it must be presented 
according to certain procedure. While it is not desired to be 
too technical, yet applicants must be required to follow the 
simple and well-known procedure laid down in the Office 
rules and in a long line of decisions. 

Filbel V. Fox, 130 0. G. 2375. 
A motion under this rule is a proper way of showing cause 
under rule 114. 

Filbel V. Fox, 130 0. G. 2375. 

(3) Subject-Matter of Motion. 

When dissolved the matter becomes ex parte and one party 
can not interfere with the issuing of a claim to the other. 
Sovereign et al. v. Lillie, 185 0. G. 830. 
In an interference between a patent and an application 
for the reissue of a patent, it appears that the invention was 
not shown in the original patent, priority awarded to patentee. 
Nelson v. Felsing and Felsing v. Wilson, 142 0. G. 289. 
Under the rulings of the Court of Appeals of the District 
of Columbia in Foster v. Antisdel, 88 0. G. 1527, Prendle v. 
Brown, 112 0. G. 957, this question could not be considered 
in the Interference. If it were established that Ashton alone 
were the inventor this of itself would afford no ground what- 
ever for the award of priority to Pickard. In any case it 
wbuld be necessary for Pickard to establish priority of in- 
vention on his part to warrant a decision in his favor. 
Pickard v. Ashton and Curtis, 137 0. G. 732. 
That the application of a third party should be included. 

Carroll v. Hallwood, 135 0. G. 897. 
That a concession of priority was obtained by duress may 
not be considered collaterally. 

Wilson V. Felsing and Felsing v. Nelson, 142 0. G. 289. 
An interference should be dissolved when the interference 
claim is improperly introduced into- a reissue application by 
ooe of the parties. 

Evans, Bussel & Vose, 1873 C. D. 36. 
An interference should be dissolved when the interference 
claims are not legitimate combinations. 

■ Pearl & Sawyer, 1874 C. D. 58; Lynch & Eoff v. Drvden 
& Underwood, 1873 C. D. 73. 



Rule 122 MOTION to dissolve. 466 

A motion to dissolve the interference on the ground of lack 
of patentable invention in the claim involved allowed. 

Dunton v. Young & McFarren, 10 0. G. 243; Chambers 
& Mendham v. Tucker et al., 11 0. G. 1009. 
Motion to dissolve for non-interference in fact, only in- 
volves all inquiries which assume patentability of the claims. 
Zeidler v. Leech, 1891 C. D. 9. 
If the applicant does not choose to restrict his application 
in the manner pointed out in Eule 104, but thinks the 
claims do not interfere, he may move to dissolve the inter- 
ference under this rule. 

Drawbaugh v. Blake, 23 0. G. 1221. 
If one party is a joint applicant and is not a joint in- 
ventor, the opposite party may move to dissolve the inter- 
ference on the ground that his opponent has no right to make 
the claim. (Authorities reviewed.) 

Hicks & Keating v. Purvis & Bilgram, 40 0. G. 348. 
After the time limit has expired it is discretionary with 
the Examiner of Interferences whether or not he will transmit 
the motion. 

Scribner & Warner v. Childs v. Balsby, 1892 C. D. 104. 
Motion to dissolve on the ground that the affidavit under 
Eule 75 was insufficient. 

Schmertz v. Appert, 77 0. G. 1784. 

(4) Ground for Dissolution. 

Since the date on which the Snedeker applications were 
filed are subsequent to the date of invention alleged in Kitsel- 
mans Preliminary statement the patents cited are not valid 
references (Forsyth v. Eichards, 113 0. G. 1537). Even 
when such patents claim the invention in question and there- 
fore could not be overcome by affidavits. Motion should not 
be transmitted. 

Eaymond v. Kitselman v. Sommers et al., 134 0. G. 2243. 

In this case the Primary Examiner dissolved the inter- 
ference on the affidavit of one of the Trauts as a sole inventor. 
This order was irregular; after the declaration of an interfer- 
ence it cannot be dissolved except by the Examiner of Inter- 
ferences, or the Commissioner, or by the Board of Examiners, 
or Commissioner on appeal. 

Traut & Traut v. Disston & Morse, 70 0. G. 99. 

A motion for dissolution should not be based upon testi- 
mony, affidavits, or other actions of an adverse party filed 
after the approval of the preliminary statements and which, 



467 MOTION TO DISSOLVE. Eule 122 

if accepted by the office, may form grounds for judgment of 
priority. 

Sullivan v. Thomson, 94 0. G. 585; Page v. Bugg, 89 0. 

G. 1343; Felbel v. Oliver, 93 0. G. 3339; Winton v. 

Jeffery, 113 0. G. 500; Ellis v. Schoreder v. Allen, 

134 0. G. 1803. 

Insufficiency of opponents affidavit under rule 75 held to be 

sufficient ground for dissolution. 

Hodgkinson v. Potter, 185 0. G. 351. 
Where applicant's preliminary statement shows two years' 
public use. 

Schenck v. Eider, 1870 C. D. 135. 
Where the proof shows that neither party made the in- 
vention, the question of priority is at an end, and there can 
be no further interference. Interference dissolved. 

A sole inventor is not a party to an interference between 
third party and himself and another as joint inventor. 

Pugh V. Hamilton, 1871 C. D. 116; Walters et al. v. 
Yost et al., 1875 C. D. 59. 
Where the specifications disclose compositions that are 
essentially different both as to proportions and the character 
of the ingredients used and the process of using the composi- 
tion, the interference should be dissolved. 
Jackson v. Xichols, 1871 C. D. 278. 
An interference should be dissolved when the interfering 
claim is to elements which are not shown to be capable of use 
by themselves. 

Jackson v. Mchols, 1871 C. D. 378. 
The interference dissolved by the Examiners-in-Chief on 
the ground that the two applications did not interfere, on an 
appeal from the final judgment of the Examiner of Inter- 
ferences. 

Prick, 1872 C. D. 134. 
An interference should be dissolved when the two inven- 
tions are radically different and designed for entirely different 
purposes. 

Pearl & Sawyer, 1874 C. D. 58; Dod v. Cobb (1876 C. 
D. 333), 10 0. G. 836. 
An interference dissolved because the claim was too broad 
in view of the state of the art. 

Scott V. Ford, 14 0. G. 413. 
If the claims are substantially the same the interference 
should not be dissolved. 

Drawbaugh v. Blake, 33 0. G. 1331. 
A motion to dissolve an interference on the ground that 
the oath to one of the applications was not taken before a 



Rule 122 MOTION to dissolve. 468 

proper officer considered, and the Commissioner says : "Judg- 
ment as to the application of A and B has been admitted to 
examination, notwitlistanding the eflfect under consideration, 
the examination will not be suspended." But no patent should 
issue until the mistake was rectified. 

Warnant v. Warnant, 17 0. G. 265. 

When an interference is sent back to the Primary Examiner 
on a motion to dissolve or suspend the interference, or by 
direction of the Commissioner upon the allegation that there 
exists a statutory bar to the claim, or that the claim is not 
patentable, or that the applicant has no right to make the 
claim (Eule 116-120), which motion is granted by the Ex- 
aminer, the interference is pro hac vice dissolved, and the 
application involved becomes ex parte. 

Eaure v. Bradley v. Cowles & Cowles, 40 0. G. 243. 

Interference dissolved to permit Primary Examiner to re- 
quire an oath applying to date of completion of the appli- 
cation. 

Miller v. Lambert, 72 0. G. 1903. 

The mere possibility that the claims may be made by the 
parties and new controversies may arise is no justification 
for dissolving an interference already in progress. 
Annand v. Spalckhaver, 87 0. G. 2741. 

Matter which has been raised on a motion to shift the 
burden of proof cannot be again raised on a motion to dis- 
solve. 

Baetz V. Kukkuck, 148 0. G. 1343. 

Motion to dissolve interference upon the ground of estoppel 
by oath of applicant to a preliminary statement and by the 
testimony of his witnesses in a previous interference wherein 
he was one of two applicants. 

Mead & Brown, 48 0. G. 397. 

Where foreign patent expired because of non-payment of 
tax and applicant summoned to ■ show cause why interference 
should not be dissolved for want of right to make the claim. 
His failure to respond construed an admission. 
Armstrong, 71 0. G. 1615. 

A motion to dissolve because opponents were estopped from 
having this interference in view of a prior interference trans- 
mitted. 

Foglesing v. Hutt & Phillips, 61 0. G. 151. 

Interference dissolved because of non -patentability of issue, 
claims were limited and new interferences declared; motion 
to dissolve because patentability was res adjudicata refused. 
Kitsee v. Eobertson, 97 0. G. 2306. 

In that case (121 0. G. 1978) the existence of interference 



469 MOTION TO DISSOLVE. Rule 122 

in fact was regarded as doubtful, and it was in view of the 
doubt that the consent of the parties was permitted to turn 
the decision in favor of dissolution. I have no doubt as to 
the existence of interference in fact in the present case. The 
interference nlust accordingly continue. (Trade-Mark.) 

Hirsch & Co. v. Jennen v. Hilbert & Sons v. Sample & 
Co., 122 0. G. 1724. 
A motion for dissolution bases upon the ground that the 
moving party has no right to make the claim to the subject- 
matter in issue should not be transmitted. 

Martin v. Mullin, 127 0. G. 3216; Miller .v. Perham, 
121 0. G. 2667; Bellows v. King, 106 0. G. 997; 
Eobins, Jr.^ v. Titus, 110 0. G. 310. 
In Hirsey v. Peters (6 Ap|). D. C. 68) this court said an 
applicant who claims an alleged patentable invention is not 
to be heard to urge non-patentability of his claim after it has 
been placed in interference with other claims. 
Potter V. Mcintosh, 127 0. G. 1995. 

(5) Patentee — Applicant. 

So far as the question of estoppel is concerned counsel has 
referred to no case, and I have been able to find none, in 
which an applicant has been held estopped to present claims 
copied from, and to contest an interference with a patent 
during the pendency of the application where the invention 
covered by these claims was disclosed in the application as, 
originally filed. 

Stevens v. Grissinger, 202 0. G. 951. 

When a patent has been inadvertently granted an applica- 
tion should not be rejected unless in a very clear case. 
Both V. Barr. 

Should it be determined in the interference that the appli- 
cant did not make the invention until after his opponent, a 
patent on his application will be refused for this reason, and 
there will be no occasion for attempting to establish a statuary 
bar. 

Luden v. Claus & Claus, 190 0. G. 265. 

Had the patentee moved to dissolve because the Applicant 
had no right to question the patentability of the issue it would 
have been granted. 

At this stage of the proceeding, however, it is thought best 
to terminate the proceeding by an award of priority. 
DeFerranti v. Lindmakr,' 183 0. G. 783. 

Where both the parties are applicants the fact that each 
of them moved to dissolve the interference on the ground 
that the issuQ is not patentable does not warrant the dis- 



Rule 122 MOTION to dissolve. 470 

solution of the same if the Examiner is of the opinion that 
the issue is patentable. 

Thomlinson v. Kelly, 183 0. G. 784. 
It is well settled that where an applicant is involved in an 
interference with a patentee and alleges in a motion to dis- 
solve the non-patentability of the issue, his conclusion will be 
accepted and the interference dissolved without transmitting 
the motion. See 109 0. G. 1608, 111 0. G. 584, 111 0. G. 
810, 115 0. G. 2136, 116 0. G. 1731. 

Paterson v. Neper, 192 0. G. 215; Blood v. Eoss, 161 
0. G. 267. 
Patentee applicant. 

Earll V. Love, 140 0. G. 1209. 
The issue should have the broadest construction possible, 
even when one party is a patentee. 

Morgan v. Taylor v. Hanson, 208 0. G. 985. 
Patentee can not contend that the Interference should be 
dissolved because it is too narrow to include applicant. 
Morgan v. Taylor v. Hanson, 208 0. G. 985. 
A patentee can not be heard _to contend for the non- 
patentability of an invention defined in the claim of his 
patent, for this would be to give him a right of opposition 
based upon a patent which pro tanto is void and from which 
no right can be derived. 

Kennedy v. Hazelton, 128 U. S. 667; Commissioner 
Ewing in Fend v. Miggett. 
An applicant should not be permitted to unnecessarily 
consume the term of a Patent. 

Gregory, etc. v. Ledux, 219 0. G. 929. 
Transmission refused to examine into the question of 
public use alleged to be shown by preliminary statement of 
an applicant on motion of a patentee. Cases reviewed. 
Thomson & Unbehend v. Hisley, 66 0. G. 1596. 
Where a patentee claiming specifically would be entitled 
to all his claims, even if he were an applicant, in spite of a 
judgment of priority in favor of his opponent, the fact that 
his opponent's claim would dominate his own is no sufficient 
reason for declaring or continuing an interference. Eule 75 
provides for precisely such a case. 

Eeed v. Landman, 1891 C. D. 73. 
Where a party's opponent is a patentee said party can not 
move to dissolve on the ground that he has no right to 
make the claims adopted by him when suggested under Eule 
96, otherwise if opponent is an applicant. 

Hernsdorf v. Driggs v. Schneider, 133 0. G. 1189. 



471 MOTION TO DISSOLVE. Rule 122 

An applicant for reissue moved to dissolve the interference 
on the grounds that the issue was not patentable. Held, 
such motion should not be considered. 
Bellows V. King, 106 0. G. 997. 
Where E., an applicant, moved to dissolve on the ground 
that the issue was not patentable, it was said: 

"The only question to be determined in the interference is 
whether a patent should issue to E., since he is the only 
applicant claiming the invention, and since he admits by 
his motion that he is not entitled to the claims there seems 
to be no reason why the Office should consume time in con- 
sidering the matter." 

Eobbins, Jr., v. Titus and Titus, 110 0. G. 310. 
A patentee is clearly entitled to make a motion upon any 
of the grounds specified. 

Fickinger & Balke v. Hulett, 110 0. G. 859. 
An applicant may move to dissolve interference on the 
ground that a patentee had no right to make the claims. 
Hull V. Hallberg, 110 0. G. 1428. 
Where one of the parties to an interference is a patentee 
and the applicant brings a motion to dissolve on the ground 
that the issue is not patentable, held that the interference 
will be dissolved, and the applicant will be thereafter re- 
garded as estopped from insisting upon the claims. 

Weissenthanner v. Goldstein, 111 0. G. 810; Lippe v. 

Miller, 109 0. G. 1608; Eobins, Jr., v. Titus et al., 

110 0. G. 310; Griffith v. Dodgson, 116 0. G. 173; 

DeFerranti v. Lindmark, 183 0. G. 782. 

A patentee may move to dissolve an interference on the 

ground that the claims are not patentable. 

Baltzley v. Seiberger, 115 0. G. 1329 (overruling Manson 
V. Huchinson, 201 0. G. 569). 
Where an applicant is in interference with a patentee and 
moves for a dissolution of the interference on the ground of 
non-patentability of the issue, the interference should be dis- 
solved even where patent has been inadvertently issued during 
pending of application. 

Griffith v. Dodgson, 116 0. G. 1731; Garnell v. Pope, 
115 0. G. 2136. 
The statute does not specifically provide for the considera- 
tion of motions, and Eule 122 both in the letter and reason 
limits the fight to such consideration to those cases where 
the opponent of the moving party is an applicant. 
Griffith V. Dodgson, 116 0. G. 1731. 
In Hisey v. Peters (6 App. D. C. 68) this court said an 



Rule 122 MOTION to dissolve. 472 

applicant who claims an alleged patentable invention is not 
to be heard to urge non-patentability of his claim after it 
has been placed in interference with other claims. 
Potter V. Mcintosh, 127 0. G. 1995. 

(6) Form of Motion. 

Transmission of motion. 

Winter v. Slick v. Wollkommer, 97 0. G. 1837. 
The statements should be such as to advise an opponent of 
the reasons which are to be urged at the hearing. 
Burleigh v. Elliott, 197 0. G. 242. 
A concession of priority is a basis for a judgment of 
priority and is not a ground for dissolution. 
Mesnard v. Hodgkinson, 190 0. G. 1027. 
It is asserted on behalf of L. that in order to read the 
issue upon the McD. construction, it must be given a cer- 
tain construction which interpretation is inapplicable to the 
L. device. This is a matter of right to make the claim and 
not a difference of meaning. 

Lindstrom v. MacDonald,, 187 0. G. 832. 
Eight to make claim, and dilference of meaning do not 
depend upon the prior art nor necessitate any consideration 
of the prior art by the Primary Examiner. 
Fowler v. Uptegraff, 184 0. G. 803. 
A motion partly on the ground of alleged lack of right to 
make the claim and in part upon an alleged difference in the 
meaning of the counts, as informal. 

Vandervild v. Smith, 159 0. G. 490. 
It is well settled that where a party moves to dissolve an 
interference when more than one reference is relied upon, it 
must be pointed out how the references are to be combined. 
Vandervild v. Smith, 159 0. G. 490. 
An appeal to the Commissioner. I'he motion is irregularly 
presented in that it is not accompanied by a motion to restore 
the Jurisdiction to the Examiner of Interferences, or by a 
motion to transmit the same. Furthermore no excuse is 
given why the grounds set forth in the present motion were 
not urged at the time the original motion for dissolution was 
presented. 

Langslow v. Malocsay, 155 0. G. 1043. 
The matter that is not readable upon the device should 
be clearly stated. If new matter improperly introduced is 
alleged it should be clearly stated of what that new matter 
consists. 

Baetz V. Kukkuck. 148 0. G. 1343. 



473 MOTION TO DISSOLVE. Rule 122 

If the motion has reference to a certain word that occurs 
in some but not all the counts, it must be specified which 
counts it refers to. 

Baetz V. Kukkuck, 148 0. G .1343. 
Form of Motion. That some of the counts do not properly- 
read on the patented structure of the moving party relates 
to the right of the patentee to make the claims and is not a 
question of formality on the declaration. 
Earll V. Love, 140 0. G. 1309. 
That the counts of the issue when considered in the light 
of the disclosure of C. who first made the claim, will not 
read on applicants structure or in other words, that applicant 
has no right to make the counts of the issue; that the counts 
have a different meaning when read upon C.'s structure from 
what they have when read upon his own. ISTeither of these 
reasons is proper subject-matter to urge under the head of 
informality in the declaration. 

Corey v. Eiseman and Mason, 122 0. G. 2063 ; Danquard 
V. Courisville, 131 0. G. 242; Skinner v. Carpenter, 
135 0. G. 661. 
If it is to be contended that the claims are vague and 
indefinite there should be a statement to that effect. 
Skinner v. Carpenter, 35 0. G. 661. 
An objection to the patentability of a claim should be 
made by a motion to dissolve the interference and not by 
an attempt to restrict the issue. 

Hockhausen v. Weston, 18 0. G. 857. 
Form and practice under this rule. 

Green v. Siemens v. Hall v. Field, 37 0. G. 1475. 
Irregularity in declaring an interference has reference to 
a case where, in consequence of some defect, some misde- 
scription, some error in describing the thing alleged to be 
the subject of the interference, or something of that character, 
a proper solution of the question of priority can not be 
reached. It does not refer to what are irregularities in con- 
sequence of a violation of the provisions of Rules 121 and 122. 
Edison & Gilliland v. Phelps, 38 0. G. 539. 
The decision must be confined to the question presented. 

Zeidler v. Leech, 1891 C. D. 9. 
If facts are relied upon other than those disclosed by the 
record, they should be stated in order to receive consideration. 
Law V. Woolf, 1891 C. D. 91, 55 0. G. 1527. 
Patentability is not in question in a motion to dissolve for 
non-interference in fact. 

Forslund' v. Matthews, 1891 C. D. 237. 



Rule 122 MOTION to dissolve. • 474 

On the granting of a motion to dissolve the interference 
after judgment on the record the Examiner of Interferences 
will vacate the judgment of priority. 

Garrison v. Hubner, 1891 C. D. 59. 
Failure to make a motion to dissolve, upon a ground that 
an accepted amendment to one of the applications involved is 
for new matter, amounts to an acquiescence in such acceptance 
and in the decision of the Office that sucli amendment does 
not involve new matter. 

Croskey v. Atterbury, 1896 C. D. 437. 
Moving to dissolve an interference upon any of the grounds 
stated in Eule 132 before the preliminary statements are 
opened and approved is a practice not to be encouraged. 
King V. Babendrier v. Libby, 89 0. 0. 2653. 
A motion to vacate judgment is not an alternative remedy 
with a motion to dissolve. 

Patten v. Weisenfeld, 98 0. G. 2589. 
In a decision the four reasons for dissolution should be 
kept distinct. 

Woodward v. Newton, 86 0. G. 490. 
The case remanded to have a decision having regard to 
the distinctions pointed out above. 

Owens V. Eichardson, Jr., Ill 0. G. 1038. 
A motion to extend time for filing an appeal should be 
accompanied by appeal. 

Greuter v. Matthew, 112 0. G. 253. 
That the counts are vague and indefinite is such an ir- 
regularity in the declaration of an interference as to pre- 
clude a, proper determination of the question of priority. 
Dinkel v. D'Olier, 113 0. G. 2507. 
It is proper in motion to dissolve to allege that a party has 
no right to make the claims giving the reasons therefor and 
to follow that allegation by the other allegation that the 
counts of the issue have different meanings in the event 
that the motion to dissolve should be denied on the first 
ground. The reason for this ground should also be given. 
• Eowntree v. Sloan, 189 0. G. 1281. 
To justify transmission of motion to dissolve because of 
difference in meaning of the count of facts must be alleged 
indicating something more than a possible lack of right of 
one of the parties to make the claims. 
Mcintosh V. Eiley, 184 0. G. 801. 
The motion to extend the time for filing motions was 
properly denied by the Examiner, who stated that the rea- 



475 motiojst to dissolve. Eule 122 

sons set forth might justify the excuse for delay should a 
motion be made. 

Egly V. Schulze, 117 0. G. 276. 

If the motion is for the purpose of including "allowable 
claims" in another pending application which has been filed 
by applicant, the motion should be accompanied by a copy 
of such claims. 

I^ormand v. Krimmelbein, 115 0. G. 249. 

A motion to dissolve for non-interference which does not 
specify which of two opponents does not interfere is irregular 
and should not be transmitted. 

Vreeland v. Fessenden v. Schloemilch, 117 0. G. 2633. 

The four grounds for dissolving interferences relate re- 
spectively to very different matters and should not be con- 
fused with one another. 

The question raised by the contention of non-interference 
in fact is whether the claims as found in the cases of the 
respective parties define one and the same invention, and the 
question is independent of the patentability of the claims, 
the right of the parties to make them or any irregularity in 
the declaration ,of the interference. 

Kaczander v. Hodges & Hodges, 118 0. G. 836. 

As pointed out in the cases of Woodward v. ISTewton, 86 
0. G. 490, and Owens v. Eichardson, 111 0. G. 1037, the 
four grounds for dissolution given in Eule 122 have distinct 
meanings which should not be confused. 
Pfingst V. Anderson, 118 0. G. 1067. 

A motion for dissolution should give the opposing party 
a reasonably definite idea of the points to be considered when 
the hearing is had. The counts of the issue against which 
non-interference is alleged should be specified. 

Yreeland v. Fessenden v. Schloemilch, 119 0. G. 1259. 

In a motion to dissolve the bare allegation that there is no 
interference in fact is insufficient. 

The point or points to be argued should be specified with 
great particularity. Not only the count or counts, but the 
particular element or elements which are to be brought into 
question should be specified. 

Dunker v. Eeist, 119 0. G. 1925. 

Dissolution for non-interference in fact must be based only 
on those facts and reasons which show that the counts of 
the issue have such different meanings that they might prop- 
erly be allowed to both parties. 

Townsend v. Copeland v. Eobjnson, 119 0. G. 2523. 

A motion to transmit because opponents' application did 



Rule 122 MOTION to dissolve. 476 

not originally contain the subject-matter of a combination 
claim must specify what element or elements of the com- 
bination were wanting. 

Latour v. Lundell, 122 0. G. 1046. 
In setting forth facts in motions for dissolutions the dis- 
tinction between the general grounds of dissolution which 
have been pointed out in Woodward v. Newton, 86 0. G. 490, 
•Owen V. Eiehardson, 111 0. G. 1037, and Ivaczander v. 
Hodges & Hodges, 118 0. G. 836, must be parefully observed. 
The observance of these distinctions is necessary . to the 
logical presentation of the question raised and to the avoid- 
ance of confusion in the matter of appeals. 

Ivlepetko v. Becker, 120 0. G. 658. 
It is to be noted that the motion does not specify the ele- 
ment or elements of the counts which can not be read on the 
two devices with the same meaning and gives no information 
to the opposing parties of the points to be argued. 

Therefore the motion was not in proper form and should 
not have been transmitted. 

Miller v. Mann, 122 0. G. 730. 
A motion to dissolve alleging non-patentability of the op- 
posiug parties' claims in view of certain specified patents is 
not indefinite simply because the patents are enough to 
anticipate the claims of both parties. 

Latour w. Lundell, 122 0. G. 1046. 
The recently established practice requiring definiteness re- 
quires that motions shall distinctly and definitely set forth 
the points to be argued, but not arguments themselves. 

Garcia v. Pons, 122 0. G. 1396. 
In a motion to dissolve because of indefiniteness of the 
counts the moving party should point out wherein the sup- 
posed indefiniteness lies, so that the opposing party will Jvuow 
the character of the arguments that he Avill be called on to 
meet. 

Berry. Kane & Stengard v. Hildreth, 122 0. G. 1722. 
The right of the appellant to allege and urge that there 
is no interference in fact is recognized, but under the present 
practice of the Office he is required to make clear upon what 
point he intends to base his arguments. 

Dickinson v. Hildreth, 122^0. G. 1397. 
Where matter is set forth in a motion for dissolution as 
basis for one ground thereof which should only be considered 
in connection with another and different ground, the motion 
is not in proper form and should not be transmitted. 

Corev V. Eisman & Misar, 122 0. G. 2063. 



477 MOTION TO DISSOLVE. Rule 122 

The statement contains no positive allegation that certain 
terms appearing in the issue have such distinct meaning 
when read as claims in the different applications that different 
inventions are represented thereby in the respective cases. 

Motions to dissolve on this ground are not in proper form 

unless they contain specific allegation of the kind mentioned. 

Booth, Booth & Flynt v. Hanan & Gates v. Marshall, 

123 0. G. 319. 

The question of incompleteness of the claims is one of 

merits, and can not be raised under the allegation of in- 

formalitv. 

Lotterhand v. Cornwall, 148 0. G. 1344. 
A motion to dissolve on the ground that the testimony 
shows the affidavit under Eule 75 was false, refused. 
Schuler v. Barnes v. Swarturrio, 140 0. G. 505. 
The failure to include claims not patentably different from 
the issue furnishes no ground for dissolution of the inter- 
ference. 

Earll V. Love, 140 0. G. 1209. 
Public use is not a basis for a motion to dissolve. 

Gardner v. Delson v. Sampliver v. Meyers, 184 0. G. 
1073-4. 
The practice to be pursued in establishing public use of an 
invention is clearly set forth in the following decisions. 

Sanford Mills v. Aveyard, 88 0. G. 385; Van Ausda, 
91 0. G. 1617. 
The question of intervening rights is not one which is 
material to the question of priority. A right to a reissue is 
an ex parte question. 

Perkins et al. v. Weeks, 188 0. G. 1052. 
It is not enough to state certain facts, it is desirable to 
state that those are the facts he desires to prove. 

Henderson & Chanley v. Kindervater, 192 0. G. 741. 
Any or all motions provided for in Eule 122 may be brought 
in connection with claims introduced under Rule 109 or the 
issue including the same, even though such motion were 
brought and the question raised thereby decided, under the 
interference as originally declared. 

Jenne v. Brown v. Booth, 1892 C. D. 78. 
Failure to make a motion to dissolve upon a ground that 
an accepted amendment to one of the applications involved 
is for new matter amounts to an acquiescence in such ac- 
ceptance and in the decision of the Office that such amend- 
ment does not involve new matter. 

Croskey v. Atterbury, 1896 C. D. 437. 



I^ule 122 MOTioisr to dissolve. 478 

Trade-Mark. If the issue in respect to the class of goods 
is narrower than the class of goods upon which the other 
party uses the mark, there has been such irregularity in 
declaring the interference that it should be dissolved. 
Banigan Co. v. Bloomingdale, 89 0. G. 1670. 
The contention that the issue is devoid of patentable novelty 
is not a proper one for consideration, since it is ex p^irte 
in character. 

Benjamin v. Searle, 59 0. G. 630. 
The question of operativeness may best be determined when 
the witnesses are called and each party given a chance to 
make such tests as may be desirable. 

The question as to whether one applicant has the right to 
make the claim and whether he did in fact make it, are not 
properly appealable. 

Eastman v. Houston, 87 0. G. 1871. 
These motions must be solely based on the applications, 

Felbel v. Oliver, 92 0. G. 2339. 
It is well settled that motions to dissolve an interference 
can not properly be based on matter outside of the record. 
Bundy v. Eumbarger, 92 0. G. 2002. 
It is well settled that the bar to a party's right which is 
contemplated by the rule — must exist independent of the 
interference. 

Horton v. Summer, 93 0. G. 2339. 
The fact that applicant asserts that his application is a 
division of a former one does not constitute an irregularity 
under this rule. 

Meyer v. Sarfert, 96 0. G. 1037. 
One party discovered that his opponent's device did not 
act as described in the application on cross examination of 
the party — not matter coming within this rule. 
Sullivan v. Thomson, 94 0. G. 585. 
The question of public use is not a proper foundation for 
a motion under this rule, but the question of anticipation 
by patents is. 

Davis V. Smith, 96 0. G. 2409. 
The motion to the Examiner of Interferences should be 
accompanied by a motion to transmit. If not made within 
twenty days excuse should be made. This is not the proper 
way to try the question of joint or sole ownership. 

Frederick v. Frederick & Frederick, 99 0. G. 1865. 
It is the settled practice of this Office that nothing can be 
considered by the Primary Examiner on a motion to dissolve 
on interference which is not contained in the record of the 



479 MOTION TO DISSOLVE. Eule 122 

case, unless timely notice of such matter as may be urged in 
support of the motion which is not of record, is served upon 
the opposing party before the time set for hearing. 
Summers v. Hart, 98 0. G. 2585. 
Where W. had two applications pending in either of which 
the claims in controversy could be made and he elected to 
make them in the later case, held that he is entitled to the 
date of his earlier case as his record date, even if the earlier 
application should have been included. In the absence of 
some substantial contention the interference will not be dis- 
solved for this reason after judgment. 
Holland, 99 0. G. 2548. 
Facts which are alleged to be established by the testimony 
are to be determined on final hearing and not on motion for 
dissolution. 

Shallenberger v. Andrews, 100 0. G. 3013. 
The question as to whether it was a serious error for the 
Examiner to have declared the interference without formally 
allowing the claim is one which should be raised under this 
rule. 

Luger V. Browning, 100 0. G. 231. 
A protest against the declaration of an interference. Such 
motions should be determined under this rule. It is contrary 
to the settled practice of the Office for the Commissioner to 
consider in advance the propriety of the proposed action of a 
lower tribunal. 

Sarfert, 102 0. G. 1049. 
The question of operativeness of invention should be de- 
termined by a motion under this rule. 
Osborn v. Hotsapillar, 102 0. G. 1296. 

A petition asking that the action setting aside a default 
resulting in abandonment, dismissed for lack of equity. 
Gerand v. Abbott, Grand & McGirr, 103 0. G. 662. 
A motion upon alleged anticipatory matter should be made 
under this rule in due time and not under Rule 126. 
Dittgen v. Parmenter, 103 0. G. 1164. 
Two interferences declared between the same parties. That 
these two issues are not patentably distinct is not ground for 
dissolution under this rule. 

Dorr V. Ames & Eearson, 106 0. G. 263. 
Questions as to new matter must be brought up under this 
rule and not by motion to shift the burden of proof under 
Rule 116. 

Tripp V. Wolff V. Jones, 103 0. G. 2171. 



Rule 122 MOTION to dissolve. 480 

The case will not be transmitted under this rule to the 
Primary Examiner to investigate the question of public use. 
Shrum v. Baumgarten, 104 0. G. 577 ; Kneisley v. Kaiser- 
ling, 174 0. G. 830. 
Whether or not the junior party materially altered his 
application after filing it, is a question not to be considered 
by a motion under this rule. 

Hopkins v. Scott (See Eowe & Brickmann, 133 0. Gr. 
515), 105 0. G. 1363. 
If the matter of the propriety of suggested claims under 
Eule 96 is to be discussed it should be by motion under Eule 
123. 

Sutton V. Steele, 107 0. G. 541. 
No appeal from the refusal of the Examiners in Chief to 
direct the attention of the Commissioner to certain patents 
alleged by one of the contestants to constitute a statutory bar. 
. Schmedl v. Walden, 1891 C. D. 150. 
The question whether or not a supplemental oath should be 
furnished is an ex parte question. The absence of such an 
oath even where it should have been furnished is not such 
irregularity as will preclude the proper determination of the 
question of priority. 

Auerbach & Gubing v. Wiswell, 108 0. G. 289; vid. 
Eowe V. Brinkmann, 133 0. G. 515. 
Motion made to dissolve because of lack of oath. Eefused 
transmission. But time given to file oath with a notice that 
if it was not filed the interference would be dissolved. A 
formal defect in the oath filed was excused. 
Graham v. Langhaar, 164 0. G. 740. 
Where, however, the moving party to an interference calls 
attention to an informality in an oath and contends that he 
should not be compelled to contest the interference unless 
and until his opponent files an oath in compliance with the 
rules, it would seem that an order may properly be issued 
calling upon the delinquent party to file an oath in com- 
pliance with Eule 46, within a limited time set under penalty 
of dissolution of the interference. 

Graham v. Langharr, 164 0. G. 740. 
Patentability of opponent's claims must be presented under 
this rule and not by appeal against award of priority. 
Kempshall v. Sieberling, 110 0. G. 1427. 
Joint or sole inventor. Interference not suspended to 
determine. 

Hull V. Hallbery, 110 0. G. 1428. 
Failure to make a motion to dissolve upon a ground that 



481 MOTioisr TO DISSOLVE. Rule 122 

an accepted amendment to one of the applications involved 
is for new matter amounts to an acquiescence in such accept- 
ance and in the decision of the Office that such amendment 
does not involve new matter. 

Croskey v. Atterbury, 1896 C. D. 437. 
If it were true that the counts of the interference covered 
two sj)ecific forms not to be included in one application, 
still this would be no ground for dissolution. 

Atherton & Happ v. Cheney, 111 0. G. 1040. 
It is well settled that the question as to whether the 
original application contains the invention should be raised 
by a motion to dissolve. It will not be considered upon an 
appeal upon the question of priority of invention. 
Seeberger v. Dodge, 113 0. G. 1415. 
Question of joint inventorship relates to a statutory bar 
and not to priority of invention, and therefore such ah in- 
quiry in an interference proceeding is not proper. 
"Eobin V. Muller & Bonnett, 113 0. G. 2506. 
Facts outside ef the record should be stated in the motion 
to receive consideration. 

Law V. Woolf, 1891 C. D. 91, 55 0. G. 1527. 
Trade-Marks. A motion to dissolve based on the ground 
that the date of adoption and use alleged by one of the 
parties was subsequent to that of registration of H, and Co. 
Held properly refused transmission but in view of the fact 
that an interference, between the application of this party 
and the registration of H. and G. had been finally decided in 
favor of the former. 

Gobel & Sons Grocer Co. v. Johnson, 180 0. G. 880. 
In trade mark cases an appeal as to priority and indentity 
of subject-matter will not be considered. 

Home V. Somer and Co., 129 0. G. 1609. 
The Examiner decides nothing but the question raised by 
the motion and appeal brings up nothing but the decision 
and the motion decided. 

Zeidler v. Leech, 1891 C. D. 9. 
As held in the case of Jenne v. Brown v. Booth, 50 0. G. 
157; C. D. 1892-78, any or all motions provided for in Eule 
122 may be brought in connection with the new claims in- 
cluded in the interference under the provisions of Rule 109, 
and therefore P.'s motion as to the new counts was- a proper 
one. 

Pfingst V. Anderson, 114 0. G. 264. 
It is the general policy of this Office to have all questions 



Rule 122 MOTION to dissolve, . 482 

wliieli may be brought in issue between the parties settled 
in one interference. 

Normand v. Ivrinnnelbein, 115 0. G. 249. 
Error in suggesting a claim under Eule 96, is not con- 
sidered such an irregularity in the declaration as will preclude 
a proper determination of the questions of priority, and is 
not therefore a sutlicient warrant for dissolving the same. 
Templin v. Sergeant, 119 0. G. 961. 
The presumptive is that the Office did its duty in notifying 
the caveators of the filing of the interfering application, and 
the burden is upon them to establish their allegation of no 
notice by adequate proof. 

Kilieher & Grimm v. Mayhew, 73 0. G. 895. 
Where a motion for dissolution rests only on limitations 
into the claims by the moving party and not stated in such 
claims. Held that the motion was properly denied. 
Votey V. Tally, 119 0. G. 339. 
A person is not estopped from moving to dissolve because 
he made the claim constituting the issue ffnd filed a pre- 
liminary statement relating thereto. 

Van Aukcn v. Osborne v. Harrison v. Canfield & Van 
Auken. 119 0. G. 1584. 
The improper issuing of a patent to one's opponent is not 
a ground for dissolution. 

Dunlvcr v. Reist, 119 0. G. 1935. 
Non-interference in fact was placed in the rules as a 
ground for dissolution of interference at a time when parties 
were put in interference proceedings who had not made the 
same claims; it can only occur now where the same terms, 
though properly used in the application of each party, have 
distinctly different meanings in the respective cases. - 
Blackmore v. Hal], 119 0. G. 3533. See Townsend v. 
Copeland v. Eobinson, 119 0. G. 3533. 
Upon a petition that the Examiner be directed to hear a 
party upon his opponents' motion to amend on the question 
his opponent's right to make proposed claims. Held, that 
petitioner may present his arguments upon motion for dis- 
solution in case the proposed claims are admitted. 
Moore v. Curtis, 120 0. G. 334. 
Unsubstantial and clerical errors do not form proper basis 
for dissolution. 

Gaily V. Burton, 130 0. G. 335. 
Matters which may be considered in determining the 
question of priority should not be transmitted to the Primary 
Examiner. Such as effect of prior applications. 
Struble v. Young, 131 0. G. 339. 



483 MOTION TO DISSOLVE. Eule 122 

Lack of Notarial Seal not a sufficient reason for dissolving 
interference. 

>Scott V. Hayes & Berger, 121 0. G. 2326. 
The right of the moving party to make the claims corres- 
ponding to the issue can not properly be raised on a motion 
to dissolve the interference, because he is of the opinion that 
he has no right to make the claims, he should take action 
in accordance with the provisions of Rule 125, concerning 
priority or abandoning the invention. 

Miller v. Perham, 121,0. G. 2667; Bellows v. King, 
106 0. G. 997; Robinson v. Titus, 110 0. G. 310; 
Martin v. Mullen, 127 0. G. 3216; Balzley v. Sei- 
berger, 115 0. G. 1329; Griffith v. Dodgson, 116 0. 
G. 1731; Garnall v. Pope, 115 0. G. 1329; Potter v. 
Mcintosh, 127 0. G. 1995. 
Where two interferences are declared, one between appli- 
cation of S. and a divisional application of P., and the other 
between the same application of S. and the parent case of P., 
the fact that the issue involving the parent case could as well 
have been included in the interference involving the divi- 
sional application does not constitute such an irregularity 
as will prevent a proper determination of the question of 
prioritv. 

Phillips v. Sensenich, 122 0. G. 1047. 
So long as the parties are claiming common features of 
the invention it is not of consequence which is superior, and 
the alleged superiority of one over the other is no ground 
for a dissolution of the interference. 

Kolb V. Hemingway v. Curtis, 122 0. G. 1397. 
If it is decided that one party has no right to make the 
claims, the question of interference in fact will not be con- 
sidered after decision becomes final. 
Warner v. Mead, 122 0. G. 2061. 
The motion for dissolution in this case seems to have 
been based upon the ground of non-interference in fact, in 
addition to that of a lack of right of a party to make claims, 
in order that the same facts of reason may be urged in con- 
nection with either or both grounds; but this is exactly what 
a party should not be permitted to do, in view of the labor 
and delay attending such double consideration both before 
the Primary Examiner and on Appeals. 

Booth, Booth & Flynt v. Hanan & Gates v. Marshall, 
123 0. G. 319. 



Rule 122 MOTION to dissolve. 484 

Where the interference is generic the first inventor of a 
species is entitled to judgment. 

Lovejoy v. Cady, 123 0. G. 654. 
If a party has no reasons to allege in his motion to trans- 
mit which would support dissolution upon appealable grounds, 
he would not be permitted to waste the time and labor of 
his opponents and of the Office with appeals which can have 
no other object than to obtain a review of an unappealable 
decision. 

Pym V. Hadaway, 123 0. G. 1283. 
Interference and patentability considered by the Primary 
Examiner a careful examination nevertheless made to deter- 
mine whether there is anything in the record of this case, as 
there was in the case of Podlesak and Podlesak v. Mclnnerney 
(Court of Appeals Jan. 4, 1906) necessitating limitations 
of the claims in the respective applications to specific non- 
interfering features. 

Bechman v. Southgate, 123 0. G. 2309, citing Sobey v. 

Holsclaw, 119 0. G. 1922;Potter v. Mcintosh, 120 0. 

G. 1823; Bechman v. Wood, 89 0. G. 2459; Bechman 

V. Wood, 89 0. G. 2462. 

The failure to include the claims did not constitute an 

irregularity. 

^^Locke V. Crebbin, 124 0. G. 317. 
It is to be noted that the question involved in the con- 
tention of Blackford relates to the patentability of the 
present issue over the subject-matter of the issue of the 
former interference, and not of the right of Wilder to make 
the claim by reason of the nature of the disclosure. The 
question is therefore not in the class indicated in my deci- 
sions as subject to consideration in determining the award of 
prioritv. 

Blackford v. Wilder, 124 0. G. 319. 
Question of res adjudicata properly raised under this rule. 
Blackford v. Wilder, 124 0. G. 319, citing Blackford v. 
Wilder, 104 0. G. 578; Potter v. Mcintosh, 122 0. 
G. 1721; Sobey v. Holsclaw, 119 0. G. 1922; Pohle v. 
McKnight, 119 0. G. 2519; Kilbourne v. Hirner, 122 
0. G. 729; Podlesak v. Mclnnerney, 120 0. G. 2127. 
Apparently an interference dissolved because of the in- 
operativeness of one party's device is not res adjudicata. 

Moore, Commissioner, v. U. S. ex rel. Coburn Machine 
Glass Co., 191 0. G. 293. 
So far as now appears there is nothing in the statute or 



485 MOTION TO DISSOLVE. Rule 122 

rules requiring the defects in Turner's oath, to be corrected 
before the same is accepted as a complete application. Such 
being the case the correction of these defects is an ex parte 
matter which may be attended to after termination of in- 
terference. 

Dukesmith v. Carrington v. Turner, 125 0. G. 348. 
A motion to require a supplementary oath and to shift 
filing date to the date of such oath should be presented as a 
motion to dissolve. 

Dukesmith v. Corrington v. Turner, 125 0. G. 348. 
It is the general policy of this Office to have all questions 
which may be brought in issue between the parties settled 
in one interference. (99 0. G. 669.) 

Xormand v. Krimmelbein, 115 0. G. 249. 
Interlocutory motions are not permitted upon questions 
requiring the takins; of proof such as originality and public 
use. (44 0. G. 945; 87 0. G. 180; 96 0. G. 2409; 103 0. 
G. 11B4; 104 0. G. 577.) 

Cory, Gilhart & Martin, Jr., v. Blakely, 115 0. G. 1328; 
Kneisly v. Kaiserling, 174 0. G. 830. 
A motion under this rule is a proper reply to an order to 
show cause under Eule 114. 

Filbel V. Fox, 130 0. G. 2375. 
The real meaning of the words of the claims may not be 
apparent when viewed solely in the light of the disclosure 
of one party. It is believed therefore that the best practical 
results will be obtained by permitting a party when moving 
to dissolve an interference not only to raise the question of 
the right of the other party to make the claims of the issue, 
but also the question of the meaning of the claims when ap- 
plied to the respective structures involved. 
Eilerman v. McElroy, 130 0. G. 2721. 
To be continued in the light of accompanying amendment. 

Xewberth v. Sizotte, 141 0. G. 1162. 
Motion denied transmission for the reason that the ques- 
tion of interference in fact is no longer a part of the 
grounds enumerated in Eule 122. 

Eilerman v. McElroy, 130 0. G. 2721. 
A motion to dissolve which alleges that the opposite party 
is not entitled to receive a patent on his reissue application, 
involving matters that should be considered on the ex parte 
reissue application should be transmitted. 
Emmet v. Fullagar, 130 0. G. 2719. 
A motion to dissolve on the ground of non-patentability of 



Rule 122 MOTION to dissolve. 486 

the issue is a proper reply to an order to show cause under 
Eule 114. 

Field V. Colman, 131 0. G. 1686. See Mofat v. Weiss, 
137 0. G. 1481. 
But formalities must be strictly complied with and the 
motion brought within the time limit. 

Eyder v. Brown v. Tripp and McMann v. White, 137 

0. G. 228. 

Vagueness and indefiniteness of the issue have uniformly 

been held a proper question to raise under informalities, or 

irregularity m the declaration of the interference, and it is 

thought properly so held. 

Field V. Colman, 131 0. G. 1686. 
It would seem that misrepresentation in a collateral mat- 
ter would be sufficient for dissolution of a trade-mark inter- 
ference, 

L. W. Levy & Co. v. Uri, 131 0. G. 1687. 
Appeal on motion to shift the burden of proof dismissed. 

Dukesmith v. Carrington v. Turner, 125 0. G. 348. 
The redeclaration of an interference to include new counts 
does not relieve against negligence in making a motion as to 
original claims. * 

Murphy v. Borland, 132 0. G. 231. 
Grounds three, four and five, allege the bar of prior knowl- 
edge and use based upon the affidavit of one Plumb. These 
grounds were properly refused transmission under the well- 
established practice set forth in 66 0. G. 1596; 96 0. G. 2409; 
104 0. G. 577; 115 0. G. 1328. M. contends that because 
these decisions refer primarily to the bar of public use the 
practice set forth therein is not applicable. This contention 
however, is not well taken, since the bar of prior knowledge 
and use alleged in the Plumb affidavit would have to be 
proved in a manner similar to the bar of public use. 
Murphy v. Borland, 132 0. G. 231. 
Motion to dissolve upon the ground that public use was 
shown by the preliminary statement of the applicant. Trans- 
mission joint and sole invention. 

Thomson & Unbehend v. Hisley, 66 0. G. 1596. 
The question whether a third party not involved in the 
interference is the real inventor of the subject-matter in issue 
is not pertinent to the question of priority of invention. 
Hamm v. Black, 132 0. G. 841. (Cases cited.) 
The question whether or not a supplemental oath should 
be required has been uniformly held by this Office to be an 



487 MOTION TO DISSOLVE. Rule 122 

ex parte matter upon which the proper determination of 
priority is not dependent. 

Auerback & Gubing v. Wiswell, 108 0. G. 289; Silver- 
man V. Hendrickson, 99 0. G. 445 ; Kane v. Brill & 
Adams, 84 0. G. 1142; Kennyson v. Merritt, 58 0. G. 
1415; Phelps v. Sensenich, 132 0. G. 677. 
It was directed in this case that the interference be sus- 
pended to give applicant a chance to file a proper oath and 
that in default the interference should be dissolved. 
Rowe V. Brinkman, 133 0^ G. 515. 
Where one of the parties to an interference added the 
claims in issue by amendment, without a supplemental oath, 
the court of appeals would not be justified in awarding priority 
to the opposing party because of such failure. The most that 
the court could do under the circumstances would be to 
remand the proceeding in order that a supplemental oath 
may be made and matter reviewed. 

Phillips V. Lensenich, 134 0. G. 1806. 
The question whether the applicant will be permitted to 
amend his specification after such dissolution to incorporate 
the matter submitted or any other amendment is an ex ■parte 
question, which must be determined independently of any 
interference proceeding. 

Wheeler v. Palmros, 133 0. G. 230. 
Facts which are alleged to be established by the testimony 
are to be determined on final hearing and not on motion to 
dissolve. 

Mead v. Brown, 48 0. G. 397; Campbell v. Brown, 
56 0. G. 1565; Chase v. Ryder, 61 0. G. 885; Lotticem 
V. Force and Parenteau, 82 0. G. 185; Sliiels v. 
Lawrence, 87 0. G. 180 ; Felbel v. Oliver, 92 0. G. 2339 ; 
Horton v. Summer, 92 0. G. 2339 ; Shellenberger v. 
Andrews, 100 0. G. 3013; Faure v. Bradley and 
Crocker v. Cowles and Cowles, 44 0, G. 945; Paget v. 
Bugg, 89 0. G. 1342; Sullivan v. Thomson, 94 0. 
G. 585 ; Frederick v. Frederick and Frederick, 99 0. 
G. 1865; Ritter v. Krakaw and Connor, 104 0. G. 
1897; Thompson and TJnbehend v. Hisley, 66 0. G. 
1596; Hopkins v. Scott, 105 0. G. 1263; Winlow v. 
Jeffery, 112 0. G. 500; Cory, Gebhart and Martin, 
Jr., V. Blakey, 115 0. G. 1328; Struble v. Young, 
121 0. G. 339; Schroeder v. Allen v. Ellis, 134 0. 
G. 1803; Falk Tobacco Co. v. Kinney Tobacco Co., 
142 0. G. 567; Schuler v. Barnes v. Swartout, 140 
0. G. 509. 
Where no testimony has been taken and there is no ob- 



Rule 122 MOTION to dissolve. 488 

jectioii by the other parties who have made similar motions 
— a motion to transmit to reform the issue should be granted; 
Townsend v. Copeland v. Eobinson, 134 0. Gr. 623 (but 
see same case 134 0. G. 1845). 
A motion to amend the specification involved in an inter- 
ference for tlie purpose of curing an alleged error therein 
should not be transmitted. (See also note to 109.) 
Wheeler v. Palmros, 133 0. G. 330. 
A motion based on defective oath should not be trans- 
mitted. 

Eowe V. Brinkmann, 133 0. Gr. 515. 
Apparently a defective oath in a reissue application may 
form a basis for dissolution. 

Emmet v. Fullagor, 130 0. G. 3719. 
A motion should not be transmitted to inquire whether or 
not one application can be changed from a joint to a sole 
application. 

Gasaw & Co. v. Odell, 190 0. G. 1038. 
The transmission of a motion filed outside of the regular 
time is a matter resting largely within the discretion of the 
Examiner of Interferences (cases). 

Bastian v. Champ, 136 0. G. 3837. 
An indefinite motion should not be transmitted. 

Howe V. Brinkmann, 133 0. G. 515. 
A petition to transmit on the ground of informality in that 
certain additions to original disclosure were improper, re- 
fused transmission. As the matter relates to right to invoke 
the claim and not as to form. 

Losher v. Barrett, 166 0. G. 751. 
The only contentions and arguments which are in order 
in support of motions to dissolve interferences for non-inter- 
ference in fact where the parties have made the same 
claims are those tending to show that the claims have different 
meanings in the case of the respective parties notwithstanding 
a perfect right upon the part of each party to make the 
claims. 

Goodwin v. Smith, 133 0. G. 998. 
The objection urged to ground C is that non-patentability 
of the issue is alleged therein, not generally but to Hadaway. 
The objection is not a valid one as it is conceivable that the 
claims might have such different meanings in the cases of 
the respective parties as to represent patentable subject-matter 
in one case and non-patentable subject-matter in the other. 
Pym V. Hadaway, 123 0. G. 1383. 
It is urged that if the claims are literally construed they 
are not patentable in view of a certain specified patent, and 



489 MOTION TO DISSOLVE. Rule 122 

for this reason they must be limited by construction to the 
specific device shown by the respective parties and that as 
so limited there is no interference in fact. The question of 
patentability can not be thus raised on a motion to dissolve 
alleging non-interference in fact. 

Klepetko v. Becker, 124 0. G. 908. 

Grounds must be specific. If it is alleged that new matter 
has been improperly introduced the new matter should be 
pointed out. 

Lizotte V. IsTewberth, 124 0. G. 1842. 

Eobinson^s motion to amend the issue does not come within 
the provisions of Eule 109. The proposed claims are claims 
not made by either of the opposing parties and were asserted 
for the first time in this motion. Besides there was too 
much delay in bring the motion. 

Townsend-Copeland v. Eobinson, 124 0. G. 1845. 

In inaugurating the practice of requiring definiteness in 
motions to dissolve it was not the intention to require the 
parties to give the arguments, but it was the intention that 
the opposite party should be given reasonable notice of the 
points to be argued. 

If the moving party is of the opinion that each of the refer- 
"ences is a substantial anticipation of each of the claims it 
should be so stated; if not the motion should enumerate the 
reference in connection with the claims to which they will 
be applied in the argument. 

Hevne. Havwood and McCarthy v. DeVilbiss, Jr., 125 
6. G. 669. 

Where a motion is made before the Examiner of Inter- 
ferences to set times for taking testimony as to operativeness, 
a showing of reasons which do not apply to applicants' own 
case must be made. 

Clement v. Browne v. Stroud, 125 0. G. 992. 

Where a party makes a reasonable showing before the Ex- 
aminer of Interferences tending to show that his opponent 
has no right to make a claim, and that showing does not 
extend to his own structure, he may be permitted to take 
testimony provided that the proposed testimony is of a 
character to justify such action. 

Pym V. Hadaway, 125 0. G. 1702. 

Townsend's argument that it is useless for him to appeal 
on the question of his right to make the claim until it is 
settled that the claims are patentable is not sound. As well 
might he argue that it would be useless for him to contest 



Rule 122 MOTION to dissolve. 490 

the patentability of the claims as long as it was held he had 
no right to make the claims. 

Townsend v. Ehret, 135 0. G. 2051. 

The distinction between the several grounds for dissolution 
— refused to exercise supervisory power upon question of 
patentability under the circumstances. 

Daggett V. Kaufmann, 127 0. G. 3641. 

M. moved to dissolve as to one set of counts if the other 
set were found unpatentable on T.'s motion. Transmission 
refused because it was alternative and bad in form. 
Turner v. Macloskie, 128 0. G. 2835. 

The statement that this count "does not involve patentable 
invention over each of the following letters patent" after 
which certain patents are specified, is a sufficient compliance 
with the practice of the Office as set forth. 
Heyne et al. v. De Vilbiss, 125 0. G. 1292. 

Nothing is alleged in this case in support of the motion 
to dissolve because the counts have different meanings in 
the two applications, which may not be fully accounted for 
by lack of right of one or the other of the parties to make 
the claim, or which indicates that any other reason exists 
for dissolving the interference; under these circumstances 
the refusal to transmit the motion was right. ' 

Cushman v. Edwards, 128 0. G. 457. 

It is not pointed out in the motion what meaning may be 
given to counts four and five in one case that would Justify 
the allowance of these claims to each party without regard 
to which was the 23rior inventor. Such a statement is essential 
for transmission on the ground of different meanings. 
Cushman v. Edwards, 128 0. G. 456. 

M. moved to dissolve as to one set of counts if the other 
set were found unpatentable on T.'s motion. Transmission 
refused because it was alternative and bad in form. 
Turner v. Macloskie, 128' 0. G. 2835. 

Where claims have been suggested to an applicant and he 
makes the same under protest, (accompanying the protest 
with a statement that he does not believe that he has a 
right to make them, giving, his reasons for that statement, 
and where after inspecting the other parties' application he 
still contends that he has no right to make them, he should 
be permitted to argue the question before the Primary Ex- 
aminer. The practice announced in Miller v. Perhan, 121 
0. G. 2667, is modified to this extent. 

Eichelberger & Hibner v. Dillon, 129 0. G. 3161 ; Herms- 
dorf V. Driggs v. Schneider, 133 0. G. 1189. 

Fifteen patents were cited but their pertinency was not 



491 MOTION TO DISSOLVE. Rule 122 

explained. Should not be transmitted. (Same case.) 
Eichelberger & Hibner v. Dillon, 139 0. G. 3161. 
The ground of motion based upon the prior art is entirely 
too indefinite to satisfy the requirement of the present prac- 
tice. It gives the opponent no information as to what 
patents are to be urged against the respective counts or how 
applicant purposes to use or combine them to anticipate the 
inventions of the counts. 

Brown v. Inwood and Lavenberg, 130 0. G. 978. 
That the claims are unpatentable to C, and because lack- 
ing in invention, considered separately, and in light of the 
prior art as evidenced by patents cited against the respective 
applications of the parties and other patents known to the 
Examiner and the parties hereto, is so obviously indefinite as 
to need no comment. It is well settled that where patents 
are relied upon they must be named specifically and applied. 
Brown v. Inwood and Lavenberg, 130 0. G. 978; Phillips 
V. Scott, 130 0. G. 1312; Lotterhand v. Cornwall, 148 
0. G. 1344. 
The invention involved in this controversy is exceedingly 
simple in character, and the application of the reference would 
appear to be obvious upon their inspection. In my opinion 
the general statement above quoted when read in connection 
with the specific discussion of each patent is ample to apprise 
the other parties and the Examiner of the application of the 
respective references to the claims. 

Herber v. Payne and Simmins v. Friedlander, 177 0. G. 
1046. 
The reasons given are general and do* not point out the 
specific portions of the claims which are alleged to have 
different meanings in the two applications, and is too in- 
definite to be transmitted. 

Eichelberger & Hibner v. Dillon, 129 0. G. 3161. 
Where the reasons for delay appear clearly upon the record 
it is unnecessary to call attention to them in the motion to 
transmit. 

Cutler V. Carichoff, 130 0. G. 656. 
If a machine is alleged as an anticipation it should be 
stated where it can be found. 

Brown v. Inwood & Lavenberg, 130 0. G. 978. 
The ground of the motion based upon the prior art is en- 
tirely too indefinite to satisfy the requirements of the present 
practice. It gives the opponent no information as to what 
patents are to be urged against the respective counts or how 



Rule 122 MOTION to dissolve. 492 

applicant proposes the use or combine them to anticipate the 
inventions of the counts. 

Brown v. Inwood & Lavenberg, 130 0. G. 978. 
It is stated in the motion that each of the counts from one 
to nine inclusive is unpatentable in view of the eight cited 
patents, and it is said: "Each of the counts is also met in 
each of the above patents, singly or in combination." This 
statement is clearly alternative and therefore the motion in 
that particular instead of being clear and specific, which was 
the end desired to be accomplished by inaugurating the pres- 
ent practice, is vague and indefinite. 

Thullen v. Townsend, 130 0. G. 1312; Phillips v. Scott, 
130 0. G. 1312. 
Where a motion is brought which in accordance with the 
practice can not be transmitted, it is no excuse for the delay 
in bringing the motion in proper form that numerous ap- 
peals and petitions have been taken in an attempt to have 
the original motion transmitted. 

Brantingham v. Draver & Draver, 130 0. G. 2720. 
The first ground of the motion is insufficiently stated, for 
the reason that it is not pointed out in what respect the 
claims of the issue comprise aggregations and not combina- 
tions. 

Papendell v. Bunnell v. Eeizenstein v. Gainsman v. 
Gillett, 131 0. G. 362. 
The second ground is insufficiently stated since the differ- 
ence in the meanings of the claims are not pointed out. 

Papendell v. Bunnell v. Eeizenstein v. Gaisman v. 

Gillett, 131 Ct. G. 362. 

A motion to dissolve because the issue is anticipated, must 

specify the anticipation. The practice of allowing additional 

references to be cited five days before the hearing has been 

discontinued. 

Papendell v. Bunnell v. Eeizenstein v. Gaisman v. 
Gillett, 131 0. G. 362. 
The refusal of the Examiner to dissolve the interference 
on the ground that there is no interference in fact was cor- 
rect, notwithstanding affidavits which have been filed alleg- 
ing that no confusion has resulted from the use of the 
marks referred to (Trade-Mark). 

Philadelphia Watch Case Co. v. The Dueber Watch Case 
Co. V. etc., 122 0. G. 1725. 
Dow can not be permitted to establish the fact that .he 
made the invention and its date by ex parte affidavits. 
Dow V. Converse, 106 0. G. 2291. 



493 MOTION TO DISSOLVE. Rule 122 

Motion to dissolve an interference, affidavits as to operative- 
ness received. Motion to remove from files refused (D. v. T. 
V. H., 99 0. G. 2550). 

Dickinson V. Thibodeau v. Hildrett, 1902 C. D. 202. 
The allegations is in the alternative that the counts are 
"anticipated or necessarily limited", but the motion does not 
state which counts he intends to urge as being anticipated 
and which limited, nor does it state which of the patents cited 
he relies upon as showing anticipation and which for re- 
striction of the counts. 

Murphy v. Borland, 132 0. G. 231. 
It is not intended to follow the technical rules of the 
Court, but merely to require that motions shall clearly and 
definitely set forth the points to be urged. 

Murphy v. Borland, 132 0. G. 231. 
Ground eleven does not state what grounds it is alleged 
against, and for that reason is indefinite and should not be 
transmitted. (125 0. G. 669.) 

Murphy v. Borland, 132 0. G. 231. 
A motion alleging that the opposing party has no right to 
make the claims on account of informality of his specification 
is too indefinite. If petitioner meant that new matter had 
been improperly introduced into his opponent's specification 
he should have said so definitely. 

Eoe V. Brinkmann, 133 0. G. 515. 

(7) Transmission of Motion. 

(See "Form of Motion.") 

Transmission refused. "The part B. may move on or before 
October 5, 1914, accompanied by a showing of facts, for leave 
to take testimony to establish that the forfeiture worked 
abandonment. 

Gehring et al. v. Barry v. Long v. Wittiemore v. 
Molyneux, 225 0. G. 371. 
Trade-Mark. The reasons why interference did not exist 
did not state whether the question related to the goods or 
the mark. Indefinite. 

Hickor Jones Jewell Co. v. Ballard, 192 0. G. 992. 

A motion to dissolve made as to the same counts in a 

previous interference between the same parties res adjudicata. 

Townsend v. Thullen v. Young, 138 0. G. 768. 

A motion to dissolve alleging that one of the parties can 

not make the claims because the subject-matter formed no 



Rule 122 MOTION to dissolve. 494 

part of the original application since it did not include certain 
specified elements. Sufficiently Definite. 

Stoddard v. Malins v. Peterson and Peterson, 196 0. G. 
804. 
The necessity for this motion according to Scliulze, arises 
out of the holding of the Examiner in his decision on the 
first motion in which the counts were interpreted in a wholly 
unexpected way. I am of the opinion that S.'s position on 
this point is sufficiently well founded to justify the trans- 
mission of the motion. 

Sclmlze V. Sinnox, 181 0. G. 541. 
It is not the practice to transmit motions to dissolve filed 
before the preliminary statements are opened. (Whipple v. 
Sharp, 96 0. G. 2239) an exception may be made wjiere the 
circumstances are such that the parties would be held bound 
by the decision rendered on such motion (as where files fur- 
nished by opponent are relied on). 
Dunn V. Douglas, 184 0. G. 804. 
The assignee being the real party in interest in a previous 
motion, can not make the same motion in his own name. 
Such motion should not be transmitted. 

Townsend v. Ehrit v. Young v. Struble, 137 0. G. 1485. 
A motion to dissolve because opponent had no right to 
make the claim in the earlier of two applications which are 
divisions of each other is one relating to the shifting of the 
burden of proof and should be decided by the Examiner of 
Interference and not transmitted. 

Townsend v. Ehrit v. Young v. Struble, 137 0. G. 1484. 
A motion founded on public use should be refused trans- 
mission ; one based on affidavits should be refused as far as 
the affidavits are concerned. 

Dunn V. Douglas, 184 0. G. 805. 
It is no reason for refusing to transmit a motion, that the 
question has been considered ex parte. 

Reynolds v. Haberman, 49 0. G. 130. 
When motion in proper form and made within the former. 
For these reasons grounds seven and nine, should the time 
limit tlie Examiner of Interferences can not refuse to trans- 
mit it. 

Cammet v. Hallett, 93 0. G. 939. 
Motion to transmit in order to consider the question of 
shifting the burden of proof. Examiner of Interferences only 
decides if it is in proper form. 

Sheppard v. Webb, 94 0. G. 1577. 



495 MOTION TO DISSOLVE. Rule 122 

These motions should not be transmitted previous to the 
approval of the preliminary statements. 
Whipple V. Sharp, 96 0. G. 2229. 
Under the Practice announced in Picard v. Ashton and 
Curtis, 137 0. G. 977; Thien v. Bowen, 143 0. G. 1345; 
Knight V. Cutler, 140 0. G. 119)' the transmission of mo- 
tions to dissolve is left largely to the discretion of the Ex- 
aminer of Interferences. 

Blood V. Eoss, 161 0. G. 267. 
Where no objection is made to the transmission of a motion 
on the ground of indefiniteness it may be assumed that the 
motion is sufficiently definite to meet the view of the parties 
to the interference, under such circumstances the motion should 
be transmitted. 

Hicker Jones Jewell Milling Co. v. Ballard and Ballard, 
192 0. G. 992. 
Where a motion made in good faith is denied transmission 
because the same is not sufficiently definite. A properly made 
motion curing this defect will be transmitted. 
McQuarrie v. Manson, 142 0. G. 288. 
A motion to dissolve a trade-mark interference based on the 
ground that the label introduced during the taking of testi- 
mony contains certain deceptive statements, should not be 
transmitted as it is based on matter brought out in testimony, 
and applicant should be given an opportunity to explain on 
final hearing. 

Falk Tobacco Co. v. Kenney Tobacco Co., 142 0. G. 567. 
A motion to dissolve on the ground of intervening rights 
refund transmission. 

Perkins et al. v. Weeks, 188 0. G. 1052. 
A motion to dissolve because an oath had not been re- 
quired covering the matter, not transmitted. 

Berg V. Miller, Moon & Bell v. Frost, 192 0. G. 159. 
For the same reasons which apply to motion to amend pre- 
liminary statements (Smith and Wickers v. Emerson v. Sand- 
ers, 133 0. G. 1433) and to motions with respect to the taking 
of testimony (Goodfellow v. Jolly, 115 0. G. 1064) the 
question of transmitting motions to dissolve should be left 
largely to the descretion of the Examiner of Interferences, 
and where he grants a motion to transmit, his decision will 
not be disturbed unless it be clearly shown that such dis- 
cretion has been abused. 

Pickard v. Ashtmand Curtis, 137 0. G. 977. 
Affidavits as to operativeness should not be transmitted for 
consideration upon motion for dissolution. 

Horton v. Leonard, 155 0. G. 305; Keys and Kraus v. 
Yunck, 182 0. G. 248. 



Rule 122 MOTION to dissolve. 496 

A motion to insert claims under Eule 109, and a motion 
to dissolve because such claims are unpatentable, should not 
be transmitted. 

Weinberg- v. Boyee v. Russel and Riissel, 185 0. G. 349. 

The first ground while in a sense broad is exclusive of the 

other three grounds (quoting Weis v. Mack, 185 0. G. 830). 

Eowntrcc v. Sloan, 189^ 0. G. 1281. 

If the references are not applied motion should not be 

transmitted. 

Rowntree v. Sloan. 189 0. G. 1282. 
A motion to dissolve on the ground the opponent had no 
right to make the claim because of long delay, should not be 
transmitted as it can be argued at final hearing. 
Long V. riagg & Livermore, 190 0. G. 265. 
If in a case containing a number of claims, a motion to 
dismiss is made and refused, as to patentability in view of 
references cited, but is granted as to one claim upon another 
ground and dissolved as to that ground and redeclared with a 
substitute claim alleging non-patentability and citing other 
references which are also applicable to the other claims, 
should not be transmitted as to such other claims. 
Kennedy v. McLain, 158 0. G. 547. 
A petition to transmit on the ground of informality in that 
certain additions to original disclosure were improper, refused 
transmission as the matter relates to rights to make the 
claim and not to form. 

Lasher v. Barrett, 166 0. G. 751. 
If the motion is made within the twenty day limit the 
Examiner of Interferences seems to have no discretion but 
to transniit the motion. If made after that time it is a 
matter of discretion and will not be disturbed except when 
there has been an abuse of this discretion. The specific facts 
upon which a motion to dissolve is based need not be stated 
when the only facts relied upon are disclosed in the record. 
Winter v. Slick v. Vollkommer, 97 0. G. 1837. 
Ritter's motion to dissolve was based upon the testimony 
taken and was properly refused transmission. 

Ritter v. Kralkaw '& Connor, 104 0. G. 1897. 
Ill tlVe absence of an explanation of the delay the motion 
will not be transn\itted, or when the cause for dissolution 
arises out of the testimonv. 

Hopkins V. Scott, 105 0. G. 1263. 
A motion to transmit an amendment canceling claims be- 
fore statements filed will not be transmitted under this rule. 
Colley V. Copenhaver, 107 0. G. 268. 



497 MOTION TO DISSOLVE. Rule 122 

It is not ground for a motion to transmit because the Ex- 
aminer has requested such a course in another case. 
Parkin & Parkin v. Eiotte, 109 0. G. 1335. 
As a general rule motions to dissolve an interference are 
not transmitted when the reasons for bringing the same arise 
out of the testimony. (Felbel v. Oliver, 92 0. G. 2339.) 
Winton v. Jeffrey, 112 0. G. 500. 
When an applicant has had ample opportunity to present 
such claims as he wished and had presented several sets, a 
motion to transmit the interference in order to permit the 
Examiner to consider another set of claims was properly 
denied. 

Scott V. Emmet & Hewlett, 116 0. G. 1184. 
One party appealed to the Board on the question of patent- 
ability but recommended changes. The motion to transmit 
for reformation and dissolution should be denied as it ap- 
pears that no good purpose would be served thereby. 
Brown, Lindmark, 109 0. G. 1071. 
Where a motion for dissolution is brought long after the 
time fixed by the rules and is based upon patents discovered 
six months before the motion was made, the motion should 
not be transmitted to the Examiner for consideration. 
Wilcox V. Newton, 116 0. G. 1452. 
A motion to dissolve should not be transmitted when the 
Commissioner has ruled upon the point involved. 
Egly V. Schulze, 117 0. G. 2366, 1900 C. D. 237. 
A decision of the Examiner of Interference refusing to 
transmit will not be disturbed unless it is shown that it was 
clearly erroneous. 

Dann v. Halliday, 119 0. G. 2236. 
The Examiner of Interferences properly refused to transmit 
to the Primary Examiner motions which the Primary Ex- 
aminer has no authority to decide. 

Becker & Patiz v. Edwards, 123 0. G. 1990. 
The Examiner of Interferences properly refused to trans- 
mit to the Primary Examiner motions which the Primary 
Examiner has no authority to decide. 

Becker & Patiz v. Edwards, 123 0. G. 1990. 
A motion to transmit for inserting claims that: it appears 
from a decision of the Primary Examiner in the case can not 
be made by the party, should be refused. 

Townsend v. Copeland v. Ebbinson, 124 0. G. 623. 



Rule 122 MOTION to dissolve. 498 

(8) Petition to Extend Time. 

The Examiner of Interferences was right in not extending 
the time for filing motions, for the granting of such extension 
would have nO other effect than to cause unnecessary delay 
in the proceedings in those cases where the motion contem- 
plated was not filed. 

Egly V. Schulze, 117 0. G. 326, 1905 C. D. 237. 
The time within which to bring motions was first set to 
expire January 11, but in view of stipulations by the 
parties this was extended to expire on February 11. 
Barratt v. Swindlehart, 144 0. G. 818. 
A petition to extend the limit of appeal to include an 
appeal filed after the expiration thereof must be supported 
by verified showing in excuse for the delay. 

Kletzker & Goesel v. Dodson, 109 0. G. 1336; Autenrith 
& Rane v. Soresen, 120 0. G. 2126. 
When an appeal is filed after the time limited it should 
be accompanied by a motion to restore jurisdiction. 
Greuter v. Mathiew, 112 0. G. 253. 
As the present motion is not accompanied by affidavits 
showing why appeal has not been taken to the Examiner-in- 
Chief within the limit of appeal originally set, it has no 
standing and must be dismissed from further consideration. 
Kletzker & Goesel v. Dodson, 109 0. G. 1336; 110 0. 
G. 305-308. 
Although the date of a reference relied upon in a motion 
to dissolve alleging anticipation of the issue is later than the 
date of conception set in the preliminary statement of the op- 
posing party, the motion may nevertheless be transmitted in 
order that the Primary Examiner may consider the pertinency 
of the reference and permit the filing of an affidavit alleging 
the facts required by Rule 75, outside of those contained in 
such preliminary statement. 

Martin v. Goodman v. Dyson v. Suttig & Goodrum, 
130 0. G. 1485. 
No reasons being given in support of the reasons for dis- 
solution, transmission was properly refused. 
Miller v. Wallace, 131 0. G. ' 1689. 
The original counts, one and two, stand so related to the 
added counts that whatever conclusion the Examiner reaches 
regarding the dissolution of the interference as to the latter 
counts would probably be applicable to be transmitted as to 
all counts. 

Murphy v. Borland, 132 0. G. 231. 



499 MOTION TO DISSOLVE. RuIg 122 

A motion alleging informality showing that the real 
grounds relate to the right of a party to make the claim 
should not be transmitted. 

Danquard v. Courville, 131 0. G. 2421. 
Where a party acting in good faith files a motion which is 
held to be indefinite and an amended motion covering the 
informality is promptly filed within the limit of appeal set 
from the prior decision, the Examiner of Interferences should 
transmit the second or amended motion. He can not, however, 
be permitted to present his case experimentally. The first 
motion having been denied because not sufficiently definite 
and decisions cited, the second motion should have cured the 
defect, a third motion refused transmission. 

Gold V. Gold, 131 0. G. 1422; Eockstroh v.| Warnick, 

131 0. G. 234; Papendell v. Bunnell v. Keizenstein v. 

Gaisman v. Gillette, 132 0. G. 1837. 

Where the reasons for delay appear clearly upon the record 

it is only necessary to call attention to them in the motion 

to transmit. 

Cutler V. Carichoff, 130 0. G. 656. 
The transmission of a motion filed outside of the regular 
time is a matter resting largely within the discretion of the 
Examiner-of -Interference (cases) . 

Bastian v. Champ, 128 0. G. 2837. 
Where an amendment to a motion was filed after the time 
limit had expired, the original motion having been filed in 
time, and no delay being occasioned, held that the time of 
filing the amendment was no objection. 
^Smith V. Fox, 130 0. G. 1312. 

( 9 ) Evidence — Affidavits. 

Affidavits received on both sides as to public use. 

Young V. Hoard, 1870 C. D. 59. 
Affidavits asserting inoperativeness of opponents device im- 
proper. 

Quensel v. Knox v. Pries v. Murphy, 185 0. G. 248. 
Affidavits as to non-patentability should not be considered. 

Ellis V. Boyce v. Burchenal, 195 0. G. 273. 
Affidavits received as to utility of device. 

Hunger, 1869 C. D. 3; Cheesbrough, 1869 C. D. 18. 
Backed by affidavits of others. 

Harris, 1870 C. D. 62; Phillips, 1871 C. D. 273; Richard- 
son, 1872 ■ C. D. 144. 



Rule 122 MOTION to dissolve. 500 

As to the former practice of invention with the affidavits 

of GX136rts. 

William Thie, 1870 C. D. 61. 
Ex parte affidavits are not completent to establish the statu- 
tory bar of two years' public use. 

Wicks & Wyman v. Knowles, 11 0. G. 196; Anson v. 
Woodbury, 12 0. G. 1. 
It is not enough for the applicant to charge fraud, which 
is never presumed, but must always be strictly proved, and 
then to demand that he be relieved from the burden of 
proof which the law has imposed upon him. Such a course 
will not shift the burden of proof. 
Hansen v. Davis, 1891 C. W. 72. 
If the operativeness of the device is denied, whether on a 
motion to dissolve the interference, or in any other proceed- 
ing, the applicant has a right, under Rule 31 (76) to submit 
affidavits in proof of the operativeness of his invention. An 
applicant can not by indirection be deprived of the benefit 
of this rule. 

Fuller V. Brush, 79 C. D. 328, 16 0. G. 1188. 
This rule (76) is in accordance with law. 

Hidges V. Daniels, 1880 C. D. 64. 
The Commissioner is not authorized to reject an applica- 
tion on the ground of more than two years' public use and 
sale, on ex parte affidavits, without giving the applicant an 
opportunity to cross-examine the affiants. The proof should 
conform to the fundamental canons of the law of evidence. 
Alteneck, 23 0. G. 269; decision by the Supreme Court 
of the District of Columbia. 
Public use and sale asserted, and affidavits tending to 
establish such facts filed, an order that all files be forwarded 
to the Commissioner. Upon examining the affidavits and 
files, an order issued requiring applicant to show cause, at a 
certain date, assigned, why an order directing an inquiry, into 
the question of public use and sale, should not be made. A 
copy of order directed to be served on applicant. 

■ Barricklo, 37 0. G. 672 ; see also Barricklo, 38 0. G. 417. 
The oaths of the applicant that he is the first and original 
inventor and does not know and does not believe that the 
same was ever before known or used, and that letters patent 
for the same invention for the United Kingdom of Great 
Britain and Ireland have been granted to Charles William 
Siemens, as a communication from abroad bearing date the 
5th of June, 1873, etc., is sufficient to identify the applicant 
with the British patentee, so as to defeat a motion to dis- 



501 MOTION TO DISSOLVE. EuIg 122 

solve the interference on the ground that the same invention 
was described in said previous British patent. 
Van Alteneek v. Tliompson, 17 0. G. 57. 
Where on final hearing before the Commissioner an inter- 
ference is suspended and the case remanded to the Primary 
Ezaminer for consideration of the question of operativeness, 
this question will not be considered inter partes but will be 
determined by the Examiner, subject to the regular course 
of appeal in ex parte proceedings. 

Archer, 1891 C. D. 191, 57 0. G. 696. 
The affidavit of a party that the device was operative is 
questionable in view of the fact that the testimony of others, 
who were not produced, was accessible. 
Kelly V. Plyn, 92 0. G. 1237. 
Where certain patents and publications are referred to on 
a motion to dissolve, and opposing party states on the record 
that he has no objection to their consideration, although five 
days' notice has not been given, the reference should be con- 
sidered. 

Lake v. Cahill, 110 0. G. 2235. 
Where there were two attorneys of record the sickness of 
one is not sufficient excuse for neglect to look up evidence. 
Ingoldsby v. Bellows, 113 0. G. 2214. 

Motion to dissolve an interference, affidavits as to opera- 
tiveness received. Motion to remove from fileS refused. 
Dickinson v. Thibodeau v. Hildreth, 99 0. G. 2550, 
1902 C. D. 202. 
Affidavits as to interference in fact and as to scope of 
claims in support of motion under Eule 122 refused. 

Dickinson v. Thibodeau v. Hildreth, 99 0. G. 2550; 
Summers v. Hart, 98 0. G. 2585. 
Dow can not be permitted to establish the fact that he 
made the invention and its date by ex parte affidavits. 
Dow V. Converse, 106 0. G. 2291. 
Affidavit of Expert received and considered as to identity 
of invention. 

Pelbel V. Oliver, 92 0. G. 2339. 
A jjarty's rights are not limited by proceedings had in an- 
other interference between different parties. 

Gray v. McKenzie v. McElroy, 113 0. G. 1968. 
ISTo testimony as to inoperativeness or public use previous 
to motion to dissolve. 

Barber v. Wood, 127 0. G. 1991. 
If the Examiner when the case is reached for action re- 
jects claims on the ground of non-invention the applicant 
may undoubtedly present in response to such rejection and 



Rule 122 MOTION to dissolve. 502 

have admitted affidavits which include so much of the present 
affidavits as relate to the merits and efficiency of his device, 
but which omit the irrelevant statements made in the affi- 
davits concerning the devices of others. 
Eobinson, 115 0. G. 1584. 
The refusal of the Examiner to dissolve the interference 
on the ground that there is no interference in fact was cor- 
rect, notwithstanding affidavits which have been filed alleging 
that no confusion has resulted from the use of the marks 
referred to. (Trade-Mark.) 

Philadelphia Watch Case Co. v. The Dueber Watch Case 
Co. V. etc., 122 0. G. 1725. 
I am of the opinion that testimony upon the operativeness 
of the device disclosed by the senior party should be accepted 
and considered in determining who is the prior inventor in 
this case, provided a prima facie case of imperativeness is 
made out and a satisfactory showing is presented that the 
proposed evidence is of a character to justify opening the 
case for taking testimony. Whether testimony may be taken 
in this case should be determined in the first instance by the 
Examiner of Interferences. 

Lowry & Cowley v. Spoon, 122 0. G. 2687. 
Consideration of affidavits upon motions to dissolve is not 
a right which the parties are entitled to demand. The rights 
of parties on such motions extend no further than is ex- 
pressly provided by rules of practice. Usually will extend 
no further than testimony and rebuttal. 
Browne v. Stroud, 122 0. G. 2689. 
Affidavits as to operativeness of opponent's device in an 
interference proceeding. 

Clement v. Brown v. Stroud, 125 0. G. 992. 
Affidavits as to inoperativeness of opponent's device in 
interference cases proper for making a prima facie case. 
Lowry & Cowley v. Spoon, 124 0. G. 1846. 
Ex parte affidavits as to intervening rights in interference 
cases. 

Donning v. Fisher, 125 0. G. 2765. 
An ex parte affidavit is not enough to carry a party's filing 
date back to that of a foreign application and change the 
burden of proof. 

Raulett & Nicholson v. Adams, 114 0. G. 827. 
These affidavits as to operativeness of invention may be 
filed notwithstanding an interference has been dissolved be- 
cause of the inoperativeness of the device. 
Mark, 117 0. G. 2636. 
An affidavit refused consideration on the ground that cer- 



503 MOTION TO DISSOLVE. ' RuIg 122 

tain testimony referred to therein was not properly authenti- 
cated as to officer taking it. 

Brown v. Inwood & Savenberg, 131 0. G. 1433. 

A motion made and judgment passed upon it res adjudicata 
and can not be entertained a second time upon the same 
state of facts. 

Little V. Little, Pillard & Sargent, 10 0. G. 543. 

The matter at issue in an interference proceeding and a 
public use proceeding are different, and it is for this reason 
that testimony taken on the question of priority in an inter- 
ference is not used on the issue of public use without further 
proceedings, in which the party adversely affected is given an 
opportunity to cross-examine the witnesses with that issue 
framed and to produce witnesses to explain the evidence. 
(Weber, 101 0. G. 2570.) For the same reason testimony 
taken in the public use proceeding can not be held conclusive 
of the question of priority of invention, and should not be 
used against Gilman without the institution of a second 
interference. 

Ex parte Menzelman & Overholt, 132 0. G. 232. 

(10) Delay in Bringing Motion, etc. — Excuse for Second 

Motion. 

It does not appear that the references now principally re- 
lied upon could not have been found within the time originally 
set for bringing motions, if proper search had been made at 
that time. The Examiner of Interferences, properly refused 
therefore, to transmit the motion. (99 0. G. 774, 1385; 111 
0. G. 222; 117 0. G. 597.) 

Topping V. Price, 160 0. G. 774, 340. 
E. and 0. in interference afterward M. added E. moved 
to dissolve for non-patentability refused as the motion should 
have been made in first interference. The fact that M.'s 
device threw new light on the question not an excuse. 
Onderdonk v. Eentke v. Moffat, 183 0. G. 507. 
A subsequent motion may be treated as a motion for a 
new trial. 

Fowler v. Uptegroff, 184 0. G. 803; Dunn v. Douglas, 
184 0. G. 529. 
A new meaning placed upon the issue by the Examiner 
no excuse for a second motion because the broadest possible 
interpretation will be given them. 

Burden v. Manson, 185 0. G. 529. 
The filing of a motion to take special testimony affords no 
excuse for the delay in bringing this suit. 

Pettengell v. Webster and Towle, 186 0. G. 799. 



Rule 122 MOTION to dissolve. 504 

The assignee of a party did not move to dissolve he was 
now permitted to do so afterward as an assignee of a sub- 
sequently added party. 

Waller v. Coe v. Browne, 193 0. G. 511. 

Tlie rules contemplate that a motion to dissolve the inter- 
ference on the ground of non-patentability of the subject- 
matter when the facts on which it is based are known should 
be made at the outset. Such a motion by a defeated party 
refused after judgment because of the delay. 

Blinn v. Gale, 16 0. G. 459; Mark, 117 0. G. 2636. 

Where both parties are applicants and under the head of 
informality in declaring the interference it is alleged in a 
motion to dissolve that the claims do not apply to the struc- 
ture of either party. Held that tliis is not such an admission 
as to justify a decision on priority adverse to the moving 
party. The case of Lipe v. Miller, 109 0. G. 1608, dis- 
tinguished. 

Danquard v. Courville, 131 0. G. 2421. 

The 20 days having elapsed a motion to restore jurisdic- 
tion to the Examiner of. Interference for the purpose of 
moving to dissolve should be accompanied by the motion to 
dissolve. 

If such latter motion can not be made within the time limit 
it should be made as soon thereafter as possible. 
Niedermeyer v. Walton, 97 0. G. 2306. 

In case of discovering new facts after granting the mo- 
tion to transmit to the Primary Examiner, he may consider 
such facts provided due and timely notice thereof be given 
to the party opposing the motion. A petition to amend is 
unnecessary. 

Kurz "v. Jackson & Pierce, 98 0. G. 2586, 

Whether a delay beyond the time limited shall be excused 
lies somewhat within the discretion of the Examiner. 
99 0. G. 1383. 

When a second motion to transmit is made on the ground 
of newly discovered evidence it is proper for the Examiner of 
Interferences to consider the question of due diligence. 
Whitlock & Huson, 99 0. G. 1385. 

Delay in making motion excused in view of the cost of 
obtaining a copy of opposite party's application, the difficulty 
of getting the money for the same, and the complicated nature 
of the case. In the above case the delav was due in part to 
the Office, 

Kletzer & Goesel v. Dodson, 101 0. G. 2822. 



505 motio:n" to dissolve. Kule 122 

A motion pending under this rule is not a bar to a motion 
under Eule 109, nor does it excuse delay. 
Perrussel v. Wichmann, 99 0. G. 2970. 
If a motion is not made within the 20 days limited, the 
burden is upon the mover to show that it could not have 
been sooner. 

Niedringhaus v. Marquard v. McConnell, 101 0. G. 1610. 
Under the circumstances of this case even admitting that 
Miller did not appreciate the pertinency of the patents referred 
to till April 21, 1903, a delay of over a month in bringing his 
motion after this date was not exercising due diligence. The 
affidavit accompanying witness' motion is defective in that 
it does not appear therefrom that the patents on which he 
relies to anticipate the issue could not have been obtained 
earlier by the exercise of reasonable diligence. 
Lipe V. Miller, 105 0. G. 1532. 
As the applicant has made no satisfactory showing that 
the references could not have been found before, and the 
motion presented earlier to grant his appeal would, in effect 
nullify the clause in Eule 122 requiring such motions to be 
made within twenty days following the approval of the pre- 
liminary statement. 

Sturgis & Hopewell, 109 0. G. 1067. 
AVhen no testimony has been taken and the delay is slight, 
the motion may be entertained. 

Harrison v. Shoemaker, 109 0. G. 2170. 
Where parties have not seen each other's statements a 
slight delay mav be excused. 

Doble V. Eckhart v. Henry, 110 0. G. 604. 
It appears, therefore, that the real reason for bringing the 
motion at this time is a change of purpose, arising from the 
fact that the applicant has appointed a new attorney. Such 
reason is not sufficient excuse for the delay. 
Eayburn v. Strain, 110 0. G. 603. 
A second motion to transmit considered as a motion for 
a new trial and no limit of appeal set. 
Goodfellow V. Jolly, 110 0. G. 602. 
After twenty days the burden of proof is upon applicant 
to show diligence. In the absence of such showing a refusal 
to transmit is proper. The pendency of a motion to shift 
the burden of proof is no excuse. 

McArthur & Gilbert, 111 0. G. 1624. 
The fact that an alleged anticipating patent was not dis- 



Rule 122 MOTION to dissolve. 506 

covered until the expiration of the time limit not considered 
sufficient excuse. 

Schirmer v. Lindemann & Stock, 111 0. G. 2222. 
The pendency of a motion for dissolution is no good rea- 
son for delay in bringing a motion to shift the burden of 
proof. (See McArthur v. Gilbert, 111 0. G. 1624.) 
Harvey v. Lubbers v. Easpillaire, 112 0. G. 1215. 
A second motion for dissolution will not be entertained 
unless there is good showing why new reasons advanced 
were not presented at the time of the first motion. 
Hedlund v. Curtis, 113 0. G. 1419. 
The pendency of a motion to dissolve by one party does 
not excuse delay in making such a motion by another party. 
Jackson v. Cuntz, 115 0. G. 510. 
The excuse for delay in bringing motion was the non- 
discovery of a German patent. 

Some of the grounds alleged had nothing to do with the 
German patent and therefore that was no excuse for delaying 
the motions on these grounds. No reason why the German 
patent was not discovered earlier was given and no sufficient 
excuse was given for the delay of more than two months 
after such discovery. "The pendency of an appeal upon the 
first motion, which had been decided against him is no 
excuse." 

Pfingst V. Anderson, 117 0. G. 597. 
A mere change of opinion after retention of new counsel 
will not justify transmission of the motion for dissolution 
long after (two months) the time when it should have been 
brought. 

Carver v. McCanna, 117 0. G. 599. 
It is against the policy of the Office to permit piecemeal 
motions in interference cases. 

Edy V. Schulze, 117 0. G. 276; Crecent Oil Co. v. 
V. C. Eobinson & Son Co., 142 0. G. 1113. 
Unexcused delay in bringing motion. 

Carney v. Latimer, 119 0. G. 6522. 
If the excuse for delay in bringing a motion does not 
cover the entire time the motion should not be transmitted. 
McKee v. Baker, 120 0. G. 657. 
That one was not able to get copies of papers within the 
twenty days' limit received as an excuse. It was however 
unnecessary to allege the paper were furnished by the Office. 
Steinmetz v. Thomas, 119 0. G. 1260. 
The provisions of Eule 122 requiring motions to be 
brought, if possible, within a time fixed is conducive to 



507 MOTION TO DISSOLVE. Kule 122 

orderly procedure and must be enforced. The Examiner of 
Interference was right in refusing to transmit a motion not 
made in time and unaccompanied by a proper excuse. 
Townsend v. Copeland v. Eobinson, 124 0. G. 1210. 
Where an amendment to a motion was filed after the time 
limit had expired, the original motion having been filed in 
time and no delay being occasioned, held that the time of 
filing the amendment was no objection. 
Smith V. Fox, 130 0. G. 1312. 
Motions on ground of inoperativeness are not favored and 
it is incumbent upon one bringing them to do so promptly. 
Joslyn V. Hulse, 130 0. G. 1689. 
In response to an order to show cause under Eule 114 ap- 
plicant moved to dissolve for non-patentability of issue, but 
was not sufficiently specific in applying references, amend- 
ment filed seven days after limit. In view of this attempt 
to apply the references, the promptness with which the sec- 
ond motion was filed, and the fact that refusal of the mo- 
tion will be fatal to appellant's case, it is thought that the 
last motion to dissolve should be transmitted to the Primary 
Examiner. 

Anser v. Pierce, Jr., 131 0. G. 359. 
A junior party, cited to show cause why judgment should 
not be rendered against him on the record, may move to 
dissolve for non-patentability of the issue. • 

Papendell v. Bunnell v. Eeisenstein v. Gaisman v. 
Gillett, 131 0. G. 362. 
The bringing of motions or the taking of petitions to the 
Commissioner will not stay the running of the limit of ap- 
peals from a decision on priority. 

Pym V. Hadaway, 131 0. G. 692. 
As to claims involved in a second interference between the 
same parties which could have been made in the first inter- 
ference, held that a final decision in the first interference 
on the question of priority renders that question res adjudicata. 
Hopkins v. Xewman, 131 0. G. 1161. 
It is well settled that piece-meal action can not be per- 
mitted, but where a party acting in good faith files a motion 
which is held to be indefinite, and an amended motion curing 
the informalities is promptly filed within the limit of appeal 
set from the previous decision, the amended motion should be 
transmitted. 

Gold V. Gold, 131 0. G. 1422. See, however, Eockstroh 
V. Warnock, 132 0. G. 234. 
To permit a party to prosecute separately by renewal mo- 
tions, one or more separate grounds of dissolution advanced 



Rule 122 MOTION to dissolve. 508 

in an original motion and then to appeal on the separate 
motions as they are decided against him would be to sanction 
a piecemeal procedure, which has been uniformly, and properly, 
condemned by the Office. W/s ren,ewal motion accordingly 
amounted to an abandonment of his right to appeal on the 
original motion. Appeal on original motion out of order 
appeal on renewal motion proper. 

Williams v. Webster v. Sprague, 148 0. Gr. 880; Lotter- 
hand v. Cornwall, 148 0. G. 1344. 
A second interference between the same parties upon the 
same subject-matter should not be instituted. 
Wenzelman & Overholt, 132 0. G. 233. 
Delay not relieved against by redeclaration to include ad- 
ditional counts. 

Murphy v. Borland, 132 0. G. 231. 
Transmission of motion to dissolve refused in view of the 
fact that the excuse for delay was insufficient in that it alleged 
that business of great importance prevented him from con- 
culting his attorney in time, but did not show why the matter 
could not be attended to by correspondence. 
Blackmore v. Hall, 132 0. G. 1387. 
The pendency of a motion to shift the burden of proof 
is no excuse for the delay in bringing a motion to dissolve. 
Price V. Blackmore, 133 0. G. 514; McArthur v. Gilbert, 
111 0. G. 1624. 
In the absence of positive written law excluding Sundays 
from the period of time prescribed for any purpose, they are 
counted, even though the period ends on Sunday. (Lewis 
Southerland Statutory Construction, Vol. I, p. 335.) The 
same rule is applicable to holidays. (Trade-mark.) 

Eobert A. Keasley Company v. Portland Cement Fabrik 
Hemmor, 133 0. G. 1936. 
The transmission of a motion filed outside of the regular 
time is a matter resting largely within the discretion of the 
Examiner of Interferences (cases). 

Bastian v. Champ, 126 0. G. 2837. 

(11) Expediting Proceedings. Examiner's Actions — 
Time Limit. 

Motions under this rule formerly required to be noticed for 
hearing within the time limited for appeal, so that the juris- 
diction should not be lost. 

Meyrose v. Jahn, 56 0. G. 1417, 1891 C. D. 145. 

The redeclaration of an interference to add a new party 



509 MOTION TO DISSOLVE. Rule 122 

does not excuse delay beyond thirty days from the original 
declaration, 

Townsend v. Ehrit v. Young v. Struble, 137 0. G. 1484. 

The fact that the Examiner discovered a new reference and 
brought it forward in a companion interference does not 
excuse delay in making the motion, if it does not appear 
that the reference could not have been found in time. 

Townsend v. Ehrit v. Young v. Struble, 137 0. G. 1484. 

The decision must be confined to the question presented. 
Zeidler v. Leech, 1891 C. D. 9. 

The time limited for the m'aking of motions runs from the 
day the original statements are received and approved, and 
a subsequent amendment of a preliminary statement does not 
of itself operate to extend this time. 

Scribner & Warner v. Childs v. Balsley, 1892 C. D. 104. 

Uj)on a motion to dissolve an interference upon the ground 
of irregularity in declaring the same the Primary Examiner 
is not at liberty to decide the question of patentability. 
Hutt & Phillips V. Foglesong, 1892 C. D. 190. 

On hearing nothing should be considered by the Primary 
Examiner outside of the fact disclosed by the record unless 
a showing of such additional facts accompanies the motion 
to transmit, but that where moving parties rely upon the 
record it is unnecessary for them to state in the motion the 
facts upon which the motion for dissolution is based. In 
the case of the discovery of new facts after granting the 
motion to transmit, the Primary Examiner may consider 
such facts provided due and timely notice thereof be given 
to the opposite party. 

Wells V. Packer, 90 0. G. 1947. 

When motions to dissolve are brought upon the grounds 
specified in Eule 122, the Examiner should decide the motion 
on all grounds, and if this decision is of such a nature that 
appeals therefrom may be taken he should fix a limit of 
appeal. 

Hingley v. Parker, 97 0. G. 2742. 

The Examiner should decide the motion upon all the 
grounds presented. 

Oldham & Padbury v. P. v. C. v. E., 99 0. G. 670. 

If the Examiner is of the opinion that part of the claims 
are unpatentable he should dissolve the interference as to 
these claims and continue it as to the remainder. If the 
remaining claims are sufficient to base a conclusive decision 
unon, the interference should not be dissolved to present new 
claims in place of those held unpatentable. A motion to 



Rule 122 MOTION" to dissolve. 510 

amend may be granted conditioned on the filing of an affidavit 
under Eule 75. 

Hillard v. Eckert, 101 0. G. 1831. 
When a motion is made on all the grounds specified in 
Eule 122, it is the duty of the Examiner to consider and 
determine all these grounds and assign limits of appeal to 
all that are appealable. 

Cutler V. Eiddell, 100 0. G. 763. See also Hopfelt v. 
Eead, 106 0. G. 767 and cases cited. 
Where time is limited in which to take action after the 
rendering of a decision, the date of the decision and not 
the date of the receipt of notice thereof governs. 
Greuter v. Mathieu, 112 0. G. 254. 
If there is a broad invention common to the respective 
inventions, it would seem that this fact could be determined 
by the respective parties and the claims included in the 
issue, so that this interference can proceed on its merits 
without further dela}^, of which there has been too much in 
this case. 

JSTormand v. Krimmelbein, 115 0. G. 249. 
The time limit fixed in the rules for motions means actual 
time, and Sundays and holidays are not excluded in com- 
puting it. 

Dickinson v. Xorris, 116 0. G. 593. 
Where an interference is transmitted to the Primary Ex- 
aminer for the purpose of determining the right of one of the 
parties to make the claim, and the Examiner also decides the 
question of interference in facts — held that the Examiner 
exceeds his jurisdiction. 

Podlesak & Podlesak v. Mclnnerney, 118 0. G. 835. See 
next case also, 118 0. G. 836. 
The time limited for appeal begins to run when the case 
is returned to the Examiner of Interferences and formal re- 
sumption of proceedings is noted. 

Hewitt V. Steinmetz, 122 0. G. 1396. 
Where the questions involved are patentability and the right 
of party to make claim, the motion should not be granted 
on the ground of non-interference in fact. 

Thullen v. Young & Townsend, 118 0. G. 2251. 
Successive motions discouraged. 

Scott V. Emmet & Hewlett, 119 0. G. 2233. 
Prior ex parte decision by appellate tribunal not binding 
on Primary Examiner in inter partes consideration. 
Felsing v. Nelson, 120 0. G. 2445. 



511 MOTION TO DISSOLVE. Rule 122 

The Examiner may upon a motion for dissolution of an 
interference where a party has filed a certified copy, deter- 
mine whether or not it is necessary for the other party to 
see other parts or the whole of the original application. 
Fagan v. Graybill, 121 0. G. 1013. 

It is well settled that where an interference is transmitted 
to the Primary Examiner for the consideration of one ques- 
tion, he is without jurisdiction to consider an entirely inde- 
pendent question. 

Moore v. Curtis, 121 0. G. 2325. 

Where the Examiner finds on motion to dissolve an inter- 
ference that the subject-matter in issue is not patentable, he 
should take such action in the applications subsequent to his 
decisions as will put them in condition for statutory appeal, 
so that the appeal may be continued directly to the Court of 
Appeals without the necessit}^ of a second course of appeal 
through the Patent Office. 

Newcomb v. Thomson, 122 0. G. 3013. 

No good reason appears for holding that a tribunal may not 
properly render a decision on a motion for a hearing made 
within the time limited for an appeal but noticed beyond 
such limit. 

Is^aulty V. Cutler, 126 .G. 389. 

If a motion is made before the expiration of the thirty 
days, the balance of the time is waived. 
Eockstroh v. Warnick, 132 0. G. 234. 

'No limit of appeal should be set on a decision refusing to 
expunge testimony. 

Green, Tweed & Co. v. Manufacturers' Belt Hook Co., 
132 0. G. 680. 

Where an Examiner rejects claims presented by a party for 
interference under Eule 109, he should set a limit of appeal 
from his decision whether the claims had been allowed to 
the other party or had been made for the first time by the 
moving party. 

Mattice v. Langworthy, 132 0. G. 1073. 

(12) Grounds of Appeal. 

When an interference is dissolved on the ground of right 
of parties to make claims, the question becomes an ex parte 
one. 

Woodridge v. Conrad, 165 0. G. 241. 

When it appears upon the face of the paper that the real 
grounds of a motion to dissolve relates to the merits, the 



Rule 122 MOTION to dissolve. 512 

Commissioner will not take jurisdiction either by appeal or 
petition. 

Manny v. Easley v. Greenwood, Jr., 48 0. G. 538, 86 0. 
G. 490-491, 98 0. G. 415, 97 0. G. 1173, 110 0. 
G. 6036, 107 0. G. 1098, 88 0. G. 2409, 96 0. G. 844, 
86 0. G. 1636, 89 0. G. 1862, 78 0. G. 1904. 
It thus appears that the Court of Appeals will not enter- 
tain an appeal from a decision on a motion to dissolve an 
interference, even where the decision is adverse to the right 
of a" party to make the claim. This latter question may be 
settled ex parte in the usual way after the interference. The 
whole proceeding relating to motion for dissolution is one 
of office procedure provided for bv the authority of E. S. 
Sec. 483, Newcomb v. Lemp, 112 0. G. 1216. But see U. S. 
ex rel. The Newcomb Motor Co. v. Moore Com., 133 0. G. 
1680. 

Examiner required to set a limit for appeal upon the ques- 
tion of irregularity and interference in fact. If these grounds 
are mere pretenses to get the question not appealable under 
Eule 124 reviewed the appeal will be dismissed. 
Duryea & White v. Eice, 115 0. G. 803. 
It having been finally determined that Struble has no 
right to make claims corresponding to the counts of the issue, 
the question raised by the appeal, namely, the question of 
interference in fact, becomes moot and will not, therefore, 
be decided. 

Coleman v. Struble, 114 0. G. 973. 
All the reasons given where alleged but the case was not 
appealed solely upon the ground of non-patentability of his 
opponent's claim. The Examiner properly set a limit" of 
appeal, as he is not the judge of the propriety of the appeal. 
Harnisch v. Gueniffet Benvit & Nicault, 117 0. G. 1492. 
A decision that a claim has not been abandoned by failure 
to prosecute is appealable under this rule. 
Meden v. Curtis, 117 0. G. 1795. 
It is not a question whether the issue applies to both struc- 
tures and means the same thing in both cases, but whether 
giving it to its natural and ordinary meaning the issue is 
patentable. The Examiner's decision on patentability being 
favorable the motion to dismiss this appeal is granted. 
White V. Thomson, 101 0. G. 1371 and 2825. 
On apT3eal matters not urged before the Examiner will not 
be considered. 

Pfingst V. Anderson, 118 0. G. 1067; McFarland v. 
Watson, 146 0. G. 257. 



513 MOTION TO DISSOLVE. Rule 122 

In trade-mark cases on an appeal as to priority, identity of 
subject-matter will not be considered. 

Home V. Somers & Co., 129 0. G. 1609. 

Whether or not the application discloses the subject-matter 
of the interference, and, therefore, whether or not the inter- 
ference is properly declared, is a question ordinarily to be 
determined by the Patent Office. (See Ostergen v. Tripler, 
17 App. D. C. 558; Herman v. Pullman, 33 App. D. C. 264- 
265.) However, this Court has held that in extreme cases 
where palpable error has been committed, the decision of the 
Patent Office holding identity of invention between the de- 
vices of the parties to the interference may be reversed. (See 
Podlesak & Podlesak v. Mclnnerney, 26 App. D. C. 399.) 
McMulken v. Bolee, 130 0. 0. 1691. 

Where the claims of the interfering party are in identical 
language there is an interference in fact, although there may 
be specific differences in the two constructions, such specific 
differences not being specified in the claims. 

Gordon v. Wentworth, 1906 C. D. 52 ; 120 0. 0. 1165. 

(13) Shifting Burden of Proof. 

See Eule 116. 

Burden of proof when originality denied. 
Wherry v. Heck, 49 0. G. 559. 

It is not enough for the applicant to charge fraud, which 
is never presumed, but must always be strictly proved, and 
then to demand that he be relieved from the burden of proof, 
which the law has imposed upon him. Such a course will not 
shift the burden of proof. 

Hansen v. Davis, 1891 C. D. 72. 

The burden of proof in an interference is upon the con- 
testant who fails to make a claim to the improvement in con- 
troversy or a statement equivalent thereto until the same was 
claimed by the other party to the interference. 
Eeichenbach v. Goodwin, 1893 C. D. 50. 

A formal abandonment of the earlier application does not 
shift the burden of proof, if there is a clear continuity of ac- 
tion between it and the second application, where the two 
applications are filed by the same applicant and cover sub- 
stantially the same subject-matter. 

Parmly v. Hockhausen, 1891 C. D. 180. 

The presumption is that the Office did its duty in notifying 
the caveators of the filing of the interfering application, and 



Rule 122 MOTION to dissolve. 514 

the burden is upon them to establish their allegation of no 
notice by adequate proof. 

Killeher & Grimm v. Mayhew, 73 0. G. 895. 

A reissue has the same standing as to burden of proof as 
the original patent. 

Hansen v. Davis, 1891 C. D. 72. 

Motion to shift need not set up facts unless they are outside 
the record. 

Sheppard v. Webb, 94 0. G. 1577. 

A motion to shift the burden of proof because the invention 
in issue was introduced by amendment is improper. The 
remedy is by motion to dissolve under Eule 122. 
Tripp V. WolfE v. Jones, 103 0. G. 2171. 

If one wishes to establish the date of filing of an earlier 
application he should do so by a motion to shift the burden 
of proof, in which case the decision of the Primary Examiner 
as to the admission of claims will be final. If such earlier 
application is brought in the course of taking the testimony 
it will be considered like other testimony by all the tribunals 
having jurisdiction. 

Eobinson v. Copeland, 102 0. G. 466. 

A motion to shift the burden of proof may be founded 
upon matters outside of the record. 

Bundy v. Eumbarger, 92 0. G. 2001-2. 

When an error is discovered by the Examiner of Interfer- 
ences which would amount to such an irregularity as would 
preclude proper determination of the question of priority, 
such as the improper placing of the burden of proof, the 
interference should be forwarded to the Primary Examiner 
with a statement of facts, that he may correct his letter 
forwarded to the Examiner of Interferences under Eule 97. 
Lutz V. Lewis, 110 0. G. 2014. (Sup.) 

The pendency of a motion for dissolution is no good reason 
for delay in bringing a motion to shift the burden of proof 
(See McArthur v. Gilbert, 111 0. G. 1624). 

Harvey v. Lubbers v. Easpillaire. 112 0. G. 1215. 

F.'s patent does not make him the senior party in the pro- 
ceeding; as D. was the first to file an application, he is the 
senior party in this proceeding, and it is incumbent upon F. 
in order to prevail to establish his case by a preponderance of 
evidence. 

Furman v. Dean, 111 0. G. 1366. 

Motions to shift the burden of proof are brought under the 
provisions of Eule 116. In a proper case the burden of 
proof can be shifted without dissolving and redeclaring the 
interference. 



515 MOTION TO DISSOLVE. Rule 122 

Motions to shift the burden of proof should be made before 
the Examiner of Interferences within the twenty days after 
the approval of the preliminary statement allowed for mo- 
tions. This case withdraws jurisdiction from the Primary 
Examiner in this class of cases. 

Eaulet & Nicholson v. Adams, 114 0. G. 1827. 

As held in the case of Eaulet & Nicholson v. Adams (114 
0. G. 1827) no appeal will be entertained upon interlocutory 
motion relating to the burden of proof, but that matter may 
be brought up with the final decision as to priority of in- 
vention. Such motions should be made before the Examiner 
of Interferences. 

Osborne v. Armstrong, 114 0. G. 2091. 

An ex parte affidavit is not sufficient to change the burden 
of proof by carrying back a party filing date to that of a 
foreign application. 

Eaulet & Nicholson v. Adams, 114 0. G. 1827. 

A previous application which does not show all the elements 
of the issue can not avail to shift the burden of proof. 
Norden v. Spaulding, 114 0. G. 1828. 

An applicant shows two species but claims only one; held 
that a second application for the species not claimed may 
have the date of the original application. 

Van Eecklinghauser v. Dempsler, 148 0. G. 277. 

Said by Commissioner on Appeal — Before the interference 
proceeds further it should be positively determined whether 
or not these new references anticipate the issue. 

Wright & Stebbens v. Hansen, 114 0. G. 761. 

Claimed that the invention was not shown in original ap- 
plication but was introduced by amendment subsequent to the 
filing of opponent's application. If well founded this would 
entitle S., who was the first to conceive, to the benefit, also, 
of the earlier reduction to practice, and an inquiry into the 
question of diligence would be unnecessarv. 
Seeberzer v. Dodge, 114 0. G. 2382. "^ 

As a general rule the burden of proof rests on the party 
against whom judgment would be rendered if no evidence were 
adduced on either side. This question involving the taking 
of testimony, should be considered by the Examiner of Inter- 
ferences, and there is no appeal from his decision prior to the 
final appeal. 

Fennell v. Brown v. Borsch, 115 0. G. 1328. 

The alleged improper placing of the burden of proof 
forms no proper basis for motion for dissolution, and that 



Rule 122 MOTioisr to dissolve. 516 

question should be presented by separate motion to shift the 
burden of proof. 

Blackmore v. Hall, 118 0. G. 2538. 

The question of shifting the burden of proof is a matter 
within the jurisdiction of the Examiner of Interferences and 
not the Primary Examiner, and there is no appeal from this 
decision prior to final judgment. 

Eaulet & Nicholson v. Adams, 114 0. G. 1837; Scott v. 
Southgate, 121 0. G. 689. 

Where an appeal was taken from the action of the Primary 
Examiner denying motion to shift burden of proof, the ap- 
peal not considered and case remanded to Examiner of Inter- 
ferences. (Head note.) Opinion does not seem to bear out 
head note. 

Fisher v. Daigherly, 118 0. G. 1681. 

(14) Miscellaneous. 

See note to Eules 15, 66, 76 124, 126, 130, 145, 153. 

Cases that pass on the subject-matter of this rule. 
Allen, Com., etc., v. U. S. ex rel. Lowry et al., 116 0. 
G. 2253 ; Eschinger v. Drummond & Lieberknecht, 
* 121 0. G. 1348; Ingoldsly v. Bellows, 116 0. G. 2532. 
See note to Eule 128. Wallace, 118 0. G. 1686; Cazen 
V. Von Welsbach, 119 0. G. 650; Sobey v. Holsclaw, 
119 0. G. 1922; Park v. Lewis, 120 0. G. 323; Felsing 
V. Nelson, 121 0. G. 1347; Garnall v. Pope, 115 0. 
G. 2136; Miller, 116 0. G. 2532; Hicks v. Costello, 
103 0. G. 1163; Sibley Soap Co. v. Lambert Pharmacal 
Co., 103 0. G. 2172; Dickinson v. Thibodeau v. Hil- 
dreth, 99 0. G. 2550; Fessenden v. Potter, 101 
G- 2823; Votey v. Weist, Jr., v. Donovan, 111 
G. 1627; Macey v. Tobey v. Laning, 97 0. G. 1172 
Potter V. Van Vleck v. Thomson, 95 0. G. 2484 
Valiquet v. Johnson, 92 0. G. 1795 ; Banks v. Snediker 
17 0. G. 508; Carroll v. Stahlberg, 111 0. G. 1937 
Fickinger & Blake v. Hulett, 111 0. G. 2492; Wilkinson 
V. Junggren, 112 0. G. 252; In re Lowry, 90 0. G. 
445 ; Philadelphia Watch Case Company ; The Dueber 
Watch Case Manufacturing Co. ; The Keystone Watch 
Case Company v. Byron L. Strasburger & Company, 
122 0. G. 1725; Kugele v. Blair, 127 0. G. 1253; 
Hewitt V. Weintraub v. Hewitt v. Rogers, 128 0. G. 
1689; U. S. A. ex rel. The Newcomb Motor Co. v. 
Allen (Moore), Commissioner, 124-130 0. G. 302; 
Hewitt V. Weintraub v. Hewitt and Eogers, 128 0. 
G. 1689. 



517 MOTIONS TO STAY. Rule 123 

Rule 123. Motions to Effect Stay of Proceedings. 

Setting a motion brought under the provisions of 
Rule 109 or of Rule 122 for hearing by the law ex- 
aminer will act as a stay of proceedings pending the 
determination of the motion. To eifect a stay of pro- 
ceedings in other cases, motion should be made before 
the tribunal having jurisdiction of the interference, 
who will, sufficient grounds appearing therefor, order 
a suspension of the interference pending the determi- 
nation of such motion. 

(1) HiSTOET. 

(2) Stat of Peoceedings. 

(3) JUEISDICTIOISr. 

(1) History. 

See case cited under History of Eules 132-124 above. 

See Rule 117 of 1879 in appendix. 

Eule 59 of 1878 reads in part as follows: 

After the declaration of the interference and before the 
time for filing the preliminary statements, has expired, mo- 
tions to dissolve the same on the grounds of lack of novelty, 
or that no interference in fact exists, or that there has been 
such other irregularity in declaring the same as will preclude 
the proper determination of the question of right between the 
parties, must be made before the examiner by whom the 
interference was instituted. After the declaration of inter- 
ference such motion must be made before the tribunal having 
jurisdiction at the time. Appeal may be taken to the com- 
missioner in person; but if the examiner should decide that 
the subject-matter is not patentable in view of the state of 
the art the interference will be dissolved, and the matter 
decided upon can be proceeded with ex parte. 

Previous to the last revision the rule read as follows : 

All lawful motions, except those mentioned in Rule 122, 
will be made before and determined by the tribunal having 
jurisdiction at the time. The filing of motions will not 
operate as a stay of proceedings in any case. To effect this, 
motion should be made before the tribunal having jurisdic- 
tion of the interference, who will, sufficient grounds appearing 
therefor, order a suspension of the interference pending the 
determination of such motion. 

The following notes have this rule in view. 



Rule 123 MOTIONS to stay. 518 

CONSTRUCTIONS. 

(2) Stay of Proceedings. 

A motion for a rehearing — even if filed within the limit 
would not operate as a stay. 

Carmichael v. Fox, 104 0. G. 1656. 
A motion to operate as a stay of proceedings should be ac- 
companied by a petition to that effect. An order should then 
be entered at or before the hearing of said motion granting 
or refusing the petition. 

Dubois V. McCloskey, 17 0. G. 1158. 
When Alexander's motion to reopen was filed on March 11, 
only three days remained to him for the time limited for 
appeal. The suspension of proceedings at that time did not 
have the effect of setting aside and nullifying the order 
fixing thirty days as the limit of appeal, but merely stopped 
the running of the time until the question raised could be 
finally disposed of. As soon as that question was disposed of 
by the decision of May 13, the time for appeal again began 
to run. A limit of appeal will not usually be extended, 
Blackman v. Alexander, 105 0. G. 2059. 
There is no necessity for_ a suspension of proceedings, as 
there is now no limit of appeal running against any of the 
parties. 

Eobinson v. Townsend v. Copeland, 106 0. G. 997. 
A petition under Eule 145 is not good ground for asking 
a suspension of the interference. 

Churchward v. Douglas v. Cutler, 106 0. G. 2016-17. 
It is deemed better in the interest of uniform practice to 
require that motions be filed as provided in Rules 122 and 
123 should a suspension of proceedings be desired pending 
the determination of any lawful motion. 
Hoegh V. Gordon, 108 0. G. 797. 
A motion for rehearing does not operate as a stay of the 
running of the time in which an appeal from that decision 
■ should be taken. 

Cole V. Zarbock v. Greene, 116 0. G. 1451. 
It is no ground for the suspension of an interference that 
an infringement suit is pending. 

McBride v. Kemp, 109 0. G. 1070; Kletzker & Goesel 
V. Dodson, 109 0. G. 1336. 
If it is difficult to obtain testimony and a party elects to 
take his chances without it, he can not have the case reopened 
to introduce such evidence. 

G renter v. Matthew, 111 0. G. 583. 



519 MOTIONS TO STAY. Rule 123 

A stay will not be granted to await the determination in an 
ex parte consideration of an application not involved in the 
interference. 

Mark v. Greeuwalt, 118 0. G. 1068. 
The pendency of one motion is no excuse for the failure to 
bring other motions, and a suspension of proceedings as to 
one motion does not extend the period of time for bringing 
other motions. (Cases cited.) 

Moore v. Curtis, 131 0. G. 2325; Naully v. Cutler, 136 
0. G. 389. 
Cases in the Office will not be suspended to await the final 
decision of the Courts upon another case where similar ques- 
tions are raised. 

Potter V. Mcintosh, 116 0. G. 1451. 

(3) Jurisdiction. 

The Examiner of Interferences has no jurisdiction to de- 
termine whether access to files may be had. 

Shaver v. Dilg and Eowler, 157 0. G. 1001. 

The interference is transmitted to the Examiners in Chief, 
and they are given jurisdiction to render a supplemental de- 
cision upon the question of right to make the claim from 
which they will set new limit of appeal. 
Schutte V. Eue, 157 0. G. 753-754. 

It is a matter wholly within the discretion of the Com- 
missioner what questions or whether all questions arising out 
of interference cases shall be decided in the first instance, by 
the Examiner of Interferences or some other Primary Ex- 
aminer. 

Weitling v. Cabell, 72 C. D. 185. See also 23 0. G. 33-33. 

To what tribunal they (questions arising in an interference 
proceeding) may be appealed may be determined altogether 
by the nature of the questions themselves, and the law relat- 
ing to them. 

Weitling et al. v. Cabell, 1873 C. D. 187, 185. 

Questions of patentable combinations remanded to the 
Primary Examiner for consideration. 

Lynch & Raff v. Dryden & Underwood, 1873 C. D. 73. 

The question of two years' public use as a statutory bar 
receives consideration from the Examiner of Interferences. 
He overlooks in this connection, the question of sale. This 
appears to be a very important point. This case was re- 
manded by the acting Commissioner to the Primary Examiner 



Eule 123 MOTIONS to stay. 520 

to consider the question of sale more than two years before 
application. 

Keller & Olmesdahl v. Felder, 10 0. G. 944. 
The Examiner of Interferences is the tribnnar before whom 
an interference is originally to be heard. It is irregular to 
present the question to the Board of Examiners in the first 
instance. 

Farnsworth v. Andrews, 9 0. G. 195. 
The practice indicated by this Eule approved by McArthur 
J., but Judge Wylie said ''I have no idea that it was the in- 
tention of the law makers that in questions of interferences 
the Office should go into the question of abandonment, and he 
did not think the Commissioner had a right to establish a 
rule permitting it." 

Bigelow V. The Commissioner of Pats., 7 0. G. 606. 
If in the judgment of the Examiner of Interferences 
neither party is entitled to a patent for want of novelty, he 
must send the question back to the Primary Examiner for 
determination. He can not decide it himself. 

N'euboeker v. Schafhaus, 1873 C. D. 138. 
The Examiner of Interferences has no jurisdiction over 
questions of patentability. Such questions should go to the 
Primary Examiner as they are appealable to the Supreme 
Court of the District, and matters within the jurisdiction of 
the Examiner of Interferences can not be appealed from the 
Decision of the Commissioner. 

Little V. Little et al., 10 0. G. 543. 
Facts establishing two years' public use before application 
for a patent devQloped in an interference can not afterward 
be explained away by ex parte affidavits. Case remanded to 
the Primary Examiner to consider such question. 

Stearns v. Prescott, 13 0. G. 121. 
The Examiner of Interferences has no jurisdiction over 
of two years' public use as a bar to a patent. 

Little V. Little et al., 76 C. D. 207; Ansen v. Woodbury, 
77 C. D. 4. 

Questions of statutory bar of public use referred to the 
Primary Examiner by the Commissioner without an appeal 
from the decision of the Examiner of Interferences. 

Quimby v. Eandall, 14 0. G. 748. 
The Examiner of Interferences can not dissolve an inter- 
ference in view of ex parte affidavits setting forth public use 
as a bar to the application. The question should be remanded 
to the Primary Examiner. 

Hedges v. Daniels, 17 0. G. 152. 



521 MOTIONS TO STAY. Rule 123 

The Examiner of Interferences has jurisdiction to hear and 
determine the fact of joint or sole invention in an inter- 
ference between joint patentees and a sole applicant who is 
one of said patentees. 

Lourien v. Banister, 18 0. G. 299 (ex parte Brake r, 
M. S.) 
If it is decided that there was no joint invention the sole 
applicant would be the prior inventor, as the entity, the joint 
inventors, never invented it at all. 

Kohler v. Kohler & Chambers, 43 0. G. 247. See Har- 
rison V. Hogan, 18 0. G. 931. 
Judgment of priority given by the Commissioner and the 
case remanded to the Primary Examiner to determine the 
question of a statutorv bar by reason of public use. 
Smith V. Dimond,' 20 0. G. 742. 
After the declaration of an interference a motion to dis- 
solve should be made to the Examiner of Interferences. 
Barney v. Kellogg, 17 0. G. 1096. 
The Examiner of Interferences is a proper person to hear 
and determine questions relative to abandonment. 
Von HefEner v. Alteneck, 23 0. G. 2233. 
The practice indicated by this rule (126?) seems to be that 
such reference by the Commissioner can only be made when 
the case is brought to him regularly on appeal. In a case 
where the testimony conclusively establishes the fact that 
the invention had been in public use for more than two years 
prior to the time when the application for a patent was filed, 
I do not know that it would be a violation of the Eule for 
the Commissioner to order that the question should be de- 
termined before any decision of priority is made. But as 
above stated such is not the practice under said Eule. Such 
reference will not be made if the testimony relating to public 
use is not conclusive. 

Finch V. Bailey & Talbot, 25 0. G. 191. 
The restoration of jurisdiction for one purpose does not 
restore it for all. 

Benger v. Burson, 99 0. G. 1384. 
Motion for the dissolution of the interference on the ground 
that it was declared in violation of the provisions of Eules 
121 and 123 should be determined by the Examiner of In- 
terferences. 

Edison & Gilliland v. Philps, 38 0. G. 539. 
Motion to reopen for the purpose of taking more testimony 
comes properly before the Examiner of Interferences. 

McCallum v. Bremer, 93 0. G. 1918; Hildreth, 97 0. 
G. 1374. 



Rule 123 MOTIONS to stay. 522 

After appeal it was refused to restore jurisdiction to the 
Examiner of Interferences in order to present a motion to 
dissolve. 

Fessenden v. Potter, 101 0. G. 2823. 
The fact that a similar question has been raised by an- 
other party furnishes no ground for a rehearing. 
Davis V, Ocumpaugh v. Gerrett, 103 0. G. 227. 
Motions to shift the burden of proof should be made be- 
fore the Examiner of Interferences within the twenty days 
after the approval of the preliminary statements allowed for 
motions. (Changing jurisdiction from Primary Examiner to 
Examiner of Interferences.) 

Eaulet & Nicholson v. Adams, 114 0. G. 1827; Townsend 
V. Ehret v. Young v. Struble, 137 0. G. 1484. 
Jurisdiction of Examiner of Interferences. 

Lowry & Cowley v. Spoon, 122 0. G. 2687; Behrend v. 
Lammer v. Tingley, 124 0. G. 2536; Kugele v. Blair, 
125 0. G. 1350. 
The reason set up in the present petition why the motion 
should be remanded to the Examiner of Interferences, relate 
in the most part to the merits of that motion and are ques- 
tions which should be presented before the Primary Examiner 
and not before the Examiner of Interferences. . 
Pickard v. Ashton and Curtis, 137 0. G. 977. 
It is urged that the earlier application does not disclose 
the invention, and it is very clear that this is a matter which 
is to be considered and determined by the Examiner of Inter- 
ferences and not the Primary Examiner. 
Dickinson v. Hildreth, 122 0. G. 1397. 
The only apparent questions for consideration on a motion 
to restore jurisdiction to the Examiner of Interferences are 
whether the motion is in proper form and whether so far 
as can be seen, without going into the merits of that motion, 
it is brought in good faith. 

JsTewell V. Clifford v. Pose, 122 0. G. 730. 
Jurisdiction restored to the Examiner of Interferences after 
time limited for appeal had expired. The party should have 
a hearing upon the question whether the showing made by 
him is sufficient to warrant the reopening of the case. 
Lipscomb v. Pfeiffer, 122 0. G. 351. 
An interference will not be suspended in order to give time 
for the issuing of a patent on an application referred to but 
not included in the interference, before the other party has 
access to the files. 

Field, 130 0. G. 1587. 
It is the well settled practice of this Office that the bring- 



523 APPEALS FEOM ADVERSE DECISIONS. Rule 124 

ing of motions or taking petitions to the Commissioner will 
not stay the running of the limit of appeal from a decision on 
priority. 

Pym V. Hadaway, 129 0. G. 2073. 
The pendency of a motion under Enle 109 no excuse for 
delay. 

Josleyn v. Hulet, 130 0. G. 1689. 

Rule 124. Appeals from Adverse Decisions. 

Where, on motion for dissolution, the law exam- 
iner renders an adverse decision upon the merits of a 
party's case, as when he holds that the issue is not 
patentable or that a party has no right to make a 
claim, he shall fix a limit of appeal not less than 
twenty days from the date of his decision. Appeal 
lies to the examiners in chief in the first instance and 
will be heard inter partes. If the appeal be not taken 
within the time fixed, it will not be entertained except 
by permisison of the Commissioner. 

No appeal will be peimitted from a decision ren- 
dered upon motion for dissolution affirming the pat- 
entability of a claim or the applicant's right to make 
the same. 

Appeals may be taken directly to the Commissioner, 
except in the cases pro\T.ded for in the preceding por- 
tions of this rule, from decisions on such motions as, 
in his judgment, should be appealable. 

HISTORY. 

The rule previous to the last amendment read as follows : 
Where, on motion for dissolution, the Primary Examiner 
renders an adverse decision upon the merits of a party's case, 
as when he holds that the issue is not patentable or that a 
party has no right to make a claim or that the counts of 
the issue have different meanings in the cases of different 
parties, he shall fix a limit of appeal not less than twenty 
days from the date of his decision. Appeal lies to the Ex- 
aminers-in-Chief in the first instance and will be heard inter 
partes. If the appeal is not taken within the time fixed, it 



Rule 124 APPEALS FROM ADVERSE DECISIONS. 524 

will not be entertained except by permission of the Com- 
missioner. 

JSTo appeal will be permitted from a decision rendered upon 
motion for dissolution affirming the patentability of a claim 
or the applicant's right to make the same or the identity of 
meaning of counts in the cases of different parties. 

Appeals may be taken directly to the Commissioner, except 
in the cases provided for in the preceding portions of this 
rule, from decisions on such motions as, in his judgment, 
should be appealable. 

See Historical note under Eule 122. 



(1 

(2 
(3 
(4 
(5 
(6 
(7 
(8 
(9 

(10 

(11 
(12 



CONSTRUCTIONS, 

HiSTOEY AND SuBJECT-MaTTEK. 

Abandonment — Shifting the Burden of Peoof. 

Eight to Make the Claim. 

Affirming Patentability. 

Amendments. 

Eeheaeings. 

Assignments of Eeeoe. 

Decision of the Commissioner. 

Time When Taken — Excuse for Delay — Petition to 

Extend Time. 
To the Boaed or to the Commissioner. 
Decision of the Board. 
Miscellaneous. 



(1) History and Subject-Matter. 

These rules cannot take away the right of an applicant to 
an appeal after two rejections by the Primary Examiner. 
(E. S. see 4909.) 

U. S. ex. rel., The I^ewcomb Motor Co. v. Allen (Moore), 
Commissioner, 130 0. G. 302. 
Eefusal to suppress testimony not reversible error. 

Eempshall v. Eoyce, 129 6. G. 3162. 
No appeal to the Court of Appeals of the District on in- 
terlocutory motions in Trade-Mark cases. 

The Union Distilling Co. y. Schnieder, 129 0. G. 2503. 
ISTo appeal from decision of the Examiner extending time 
for taking testimony. Can only be modified by exercise of 
supervisory authority of Commissioner, and this only in 
unusual cases. 

Wickers and Furlong v. Weinwurm, 129 0. G. 2501. 
InoperatiA^eness and public use question in motions to dis- 
solve not appealable. 

Barber v. Wood, 127 0. G. 1991. 



525 APPEALS PEOM ADVERSE DECISIONS. Rule 124 

There is no appeal from the decision of the Primary Ex- 
aminer affirming the opponent's riglit to make the claims or 
the identity of meaning of the claims in their respective 
application. 

Daggett V. Kaufmann, 127 0. G. 3641. 
This rule is not inconsistent with section 4909 of the 
Eevised Statutes. 

Lowry v. Spoon, 112 0. G. 732. (See 133 0. G. 1680.) 
The decision of the Examiner of Interference transmitting 
a motion will not be reviewed on appeal or petition. 
Eich V. Porter v. Hamlin, 192 0. G. 1261. 
N"o appeal from a decision denying a judgment on the 
record. 

Christiant v. Brunneschenke v. Eosanz, 181 0. G. 819. 
No appeal to the Secretary of the Interior in matters of 
a quasi judicial nature such as extending time for a final 
hearing so as to relieve against a default in filing printed 
testimony. 

Dunkley v. Bukhuis, 158 0. G. 886. 
The rule that there is no appeal from decisions on motions 
to shift the burden of proof, applies also to cases where 
such a motion is made in response to a rule to show cause 
and judgment on the record results from the decision of 
the Examiner of Interferences on such motion. 
Barney v. Hiss, 158 0. G. 702. 
A motion will not be considered on appeal — although the 
reason for dismissing it no longer exists. 

Kieth, Erickson, etc., v. Lundquist v. Larimer, 158 0. 
G. 701. 
A petition for the Commissioner to exercise his supervisory 
authority, is not a remedy that may be used instead of the 
appeal refused by this rule. 

Erost V. Chase, 151 0. G. 741. 
The Examiner^s action refusing to declare an interference 
may not be appealed. (Trade-Mark.) 

Yonkers Brewery Co. v. Her and Burgweger, 143 0. 
G. 258. 
N"o appeal from a decision of the primary examiner, that 
the evidence does not establish the bar of public use. 
Hartley, 136 0. G. 1767. 
Notice of opposition to trade-mark registration on the 
ground that the notice of opposition was not signed. 

The motion is in effect a motion for judgment on the 
record and under the established practice of the Office no in- 



Rule 124 APPEALS FEOM ADVERSE DECISIONS. 526 

terlocutory appeal lies from a refusal to render such a 
judgment. 

Geo. Wostenholm & Son, Limited, v. Crowley, 135 0. 

G. 1121. 

Previous to 1880 an appeal seems to have been allowed 

from a decision affirming the patentability of a claim. The 

same result can now be attained by a protest under Eule 12. 

Fowler v. Benton, 17 0. G. 266. 

Propriety of rule discussed. (Consolidating Interferences.) 

Klein v. Groebli, 110 0. G. 305-308. 
The practice indicated by Eules 122-123-125 may not be 
the best, but as long as it is the established practice it should 
be observed. 

Brown v. La Dow, 18 0. G. 1049. 
Determined means ended or decided. This rule should 
control Eules 116 and 120. 

Hicks V. Keating & Bilgram v. Purvis, 40 0. G. 344. 
The statutes do not provide for an appeal to the Ex- 
aminers-m-Chief from a decision upon a motion to dissolve an 
interference. 

Allen, Commissioner, v. U. S. ex rel. Lowry et al., 116 
0. G. 2253. 
Eefusing to suspend interference to await determination 
of suit at law (having a different issue) is not such an abuse 
of discretion as will warrant the exercise of supervisory au- 
thority. 

Brown v. Inwood and Lavenberg, 135 0. G. 895. 
No appeal from a decision refusing to suppress testimony. 
O'Brien v. Gale v. Limimer v. Colderwood, 133 0. G. 
514; Dietscli Brothers v. Looner, 131 0. G. 2146. 
No appeal from the Examiner of Interferences granting a 
motion to admit testimony the printed copies of which were 
not filed within the time requested bv the rule. 
Blackmore v. Hill, 137 0. G. 1237. 
Whether or not, applicant should be requested to point out 
the elements of his claims in his application is a matter of 
procedure within the discretion of the Examiner. The ques- 
tion is not generally appealable. 

Hoch V. McCaskey v. Hoppkins, 141 0. G. 1161. 
Ko appeal as to new matter. 

Samulson v. Elanders, 171 0. G. 745. 
No appeal from decision affirming operativeness of op- 
ponents device. 

182 0. G. 973. 



527 APPEALS FROM ADVERSE DECISIONS. RuIg 124 

iSTo appeal from a refusal to strike out testimony. 

Eeed & Carnbrick v. Waterbury Chemical Co., 183 0. 
G. 219. 
This rule refers to a decision affirming patentability ren- 
dered after an inter partes hearing. 

Quensel v. Knox v. Pries v. Murphy, 185 0. Gr. 248. 
The Commissioner has, however, supervisory authority over 
these matters. 

Anderson & Dyer v. Lowry, 89 0. G. 1861. 
It is more than doubtful whether a construction of Eule 
124 which would deprive the Commissioner of jurisdiction 
would be a valid one. 

Von Welsbach v. Lungen, 48 0. G. 537. 
Questions arising under this rule are not reviewable by 
the Supreme Court of the District of Columbia on Appeal. 
Hulett V. Long, 89 0. G. 1141. See however U. S. ex rel. 
The J^ewcomb Motor Co. v. Moore, Com., 133 0. G. 
1680. 
I know of no confusion in the practice at present existing 
as to the proper course of appeal upon the question of inter- 
ference in fact. Eule 124 seems clear and unmistakable upon 
this point. 

Allfree v. Sarver, 122 0. G. 2391. 
Where a party may not appeal from a motion he may not 
appeal from a determination upon the admissibility of affi- 
davits filed with that motion. 

Brown v. Inwood et al., 131 0. G. 142. 
Appeal denying motion to dissolve for non-interference in 
fact is to the Commissioner and not to the Board. 
Zeidler v. Leech, 1891 C. D. 9. 
The Eules cannot take away the right of an applicant to 
an appeal after two rejections bv the Primary Examiner. 
See E. S. Sec. 4809. 

U. S. ex rel The ISTewcomb Motor Co. v. Allen (Moore) 
Commissioner, 130 0. G. 302. 
The same reasons for not permitting an appeal from a 
favorable decision exists in the case of a motion brought under 
Eule 109 as on motion to disolve. The practice on motions 
under Eule 109 should follow the practice under Eule 124. 
Townsend v. Copeland v. Eobinson, 126 0. G. 1355; 
Josleyn v. Hulse, 132 0. G. 844. 
Xo appeal from the refusal of the Examiner-in-Chief to 
direct the attention of the Commissioner to certain patents 
alleged bv one of the contestants to constitute a statutorv bar. 
Schmiede v. Walden, 1891 C. D. 150. 



Rule 124 APPEALS FROM ADVERSE DECISIONS. 528 

No appeal from a decision denying a motion to suppress 
testimony or requiring a party to print exhibits. 
Deitsch Brothers v. Looner, 131 0. G. 2146. 

No appeal from a decision setting aside a record judg- 
ment and fixink a time for final hearing, as this is not a 
final determination of the rights of petitioner in the premises. 
O'Brien v. Gale v. Limmer v. Calderwood, 133 0. G. 514. 

A party to an interference has no right to a review by the 
Commissioner of a favorable decision by the Primary Ex- 
aminer in a motion to dissolve alleging non-patentability of 
the issue either on direct appeal or upon petition for the 
exercise of his supervisory authority (E. S. 4904) urged 
to the contrary. 

Hawkins v. Coleman v. Thullen, 133 0. G. 1187. 

A decision refusing to dissolve an interference on the 
ground of res adjudicata is a favorable decision on the merits 
and was not to be reviewed on appeal. 
Degen v. Pfadt, 133 0. G. 514. 

The provision of the statute giving an applicant the right 
to have a claim twice rejected (Sees. 4903-4909) does not 
apply in inter partes cases. Where a Primary Examiner, on 
motion to dissolve decides that one of the parties has no right 
to make the claims of an interference issue, and such party 
after filing an appeal from said decision fails to prosecute the 
same, and abandons it, such decision becomes final and 
binding on the parties and precludes the subsequent ex parte 
consideration of the same question. 

U. S. ex rel. The Newcomb Motor Co. v. Moore, Com- 
missioner of Patents, 133 0. G. 1680. 

An appeal from the Examiner's ruling raises only the 
question whether or not the Examiner was right in postponing 
the consideration of the question, which is a matter that 
will not be reviewed and reversed except in a clear case of 
abuse of discretion. 

Eoyce v. Kempshall, 119 0. G. 338. 

(2) Abandonment, Shifting the Burden of Proof. 

Appeal allowed from decision of Examiner of Interferences 
fixing dates for taking testimony as to abandonment of op- 
ponent's application. 

Kinsman v. Strohm, 125 0. G. 1699. 
No appeal is permitted prior to final judgment on a motion 
to shift the burden of proof, and any supposed error in the 
decision thereon will be reviewed in connection with the 
decision upon the question of priority of invention. 
McGill V. Adams, 119 0. G. 1259. 



529 APPEALS FROM ADVERSE DECISIONS. Rule 124 

A decision that a claim is not abandoned is not one that 
is not appealable under the last paragraph of this rule, but 
is appealable under Eule 133. 

Meden v. Curtis, 117 0. G. 1795. 
A mandamus refused to compel the Commissioner to allow 
an appeal where the question of abandonment was decided in 
favor of the applicant. 

Bigelow V. Commissioner of Patents, 7 0. G. 603. 
An appeal should be allowed where permission to take 
testimony is refused. 

Pym v. Hadaway, 138 0. G. 457. 
Eefusal to suppress testimony not reversible error. 

Kempshall v. Eoyce, 139 0. G. 3163. 
It is believed that it will be to the interest of all parties 
concerned, if the Examiner of Interferences in granting mo- 
tions for the extension of time for taking testimony would 
not set a limit of appeal from such motion. 
Goodfellow V. Jolly, 115 0. G. 1064. 
Decisions of the Examiner of Interferences are final on 
motions to extend time for taking testimony, and no limit of 
appeal should be set. 

Christensen v. McKenzie, 117 0. G. 377. 
No appeal from a decision refusing to shift the burden of 
proof. 

Miller v. Wallace, 131 0. G. 1689. 
Decision on a motion to shift the burden of proof will be 
reviewed only in a clear case of an abuse of discretion. Cer- 
tainly his action will not be reviewed where no such motion 
has been brought. 

Young V. Townsend v. Thullen, 134 0. G. 1804. 

(3) Right to Make the Claim. 

Whether certaiji additions to original disclosure was proper 
relates to right to make the claim and not to form. 
Sasher v. Barrett, 166 0. G. 751. 
No appeal from the refusal of the Examiner to suggest 
claims to opponent under Eule 96. 

Stronach v. Shaw, 193 0. G. 989; Mortimer v. Thomas 

V. Brownson, 193 0. G. 315. 

No appeal from a decision on a motion under Eule 109 

that cannot be made the basis for the rejection of a claim. 

Mortimer v. Thomas v. Brownson, 193 0. G. 315. 

When it was contended that one of the parties did not 

interfere because he did not show one element of the issue, 



Rule 124 APPEALS FEOM ADVERSE DECISIONS. 530 

the question was one of the right of the party to make the 
claim, and the question was not appealable. 

Ball V. Eigo, 119 0. G. 1258. 
Res adjudicata is a question of right to make the claim and 
will not be considered on petition from a favorable decision. 

Eschinger v. Drummond & Lieberknecht, 121 0. G. 1348. 
There is no appeal from a judgment of priority rendered 
in view of the admission of a party that he is not the in- 
ventor, and no limit of appeal need be set from such a deci- 
sion. 

Townsend v. Corey, 119 0. G. 2237. 
Where both parties were agreed that the claim was un- 
patentable the appeal was entertained under the supervisory 
authority of the Commissioner. 

Eeichert v. Brown, 124 0. G. 2903. 
Favorable decision as to right to make the claim not con- 
sidered on appeal. 

Blackford v. Wilder, 124 0. G. 319; Samuelson v. 

Flanders, 171 0. G. 745. 
As the question of the operativeness of one of the devices 
now in interference is directly presented to us as an incident 
of the main question of priority, we hold that it is not one 
for our consideration. It is as we have before indicated a 
nreliminary question determinable in the first instance in 
the case of every application for a patent, and when deter- 
mined in favor of the applicant is not appealable. When 
determined in his favor, and an interference declared thereon 
with another similarly allowed application, the same rule 
applies. 

Duryea & White v. Eice, Jr., 126 0. G. 1357. 
Interferences are to determine priority. Though parties 
in these proceedings are permitted to secure reconsideration 
by the Primary Examiner of his ex parte, conclusions that 
their opponents, aside from the conflicting claims of priority, 
are entitled to patents, and though they are entitled to ap- 
pear and oppose such reconsideration, their opponents' right 
to a patent, the interest of a party has never been considered 
such that he should be permitted to appeal from the Ex- 
aminer's inter partes conclusion affirming his opponent's right 
to a patent. 

Gueniffet, Benoit & Nicault v. Wictorsohn, 117 0. G. 1492. 
The provisions of the last clause cannot be avoided by a 
petition to the Commissioner to exercise his supervisory 
authoritv. 

Kampshall v. Sieberling, 104 0. G. 1395. 



531 APPEALS FROM ADVERSE DECISIONS. Eule 124 

It is a well settled principle that a decision relating to 
sufficiency of disclosure will not be disturbed except for 
manifest error. 

Auerbach & Gubing v. Wisweld, 108 0. G. 289. 
No appeal from the decision of the Examiner that affidavit 
was sufficient to overcome the reference. 
McChesley v. Kruger, 101 0. G. 219. 
No appeal can be taken from the decision of the Primary 
Examiner allowing claims upon an affidavit under Eule 75, 
as this is a favorable decision. 

Byron v. Maxwell, 105 0. G. 499. 
Decision that a claim is a good combination and is not 
anticipated is not appealable. 

Wickers & Furlong v. Weinwurm, 117 0. G. 1797. 
Where a party requests an interference, and the Examiner 
rules that he is not entitled to make the interfering claim. 
Held that the matter will not be reviewed on interlocutory 
petition or appeal. 

Hanson, 117 0. G. 2632. 
Question of new matter is not one of regularity but one 
of right to make the claim, from which no appeal lies. 
Brooker v. Smith, 119 0. G. 652. 
Matters urged as irregularities, but which relate to right 
to make the claim, will not be heard on appeal. 
Pryor v. Ball v. Brand, 119 0. G. 653. 
There is no appeal from an affirmative decision upon the 
right of a party to make a claim, and equivalent consideration 
is not to be obtained by presenting the contention in different 
form and under a different name. As, for instance, whether 
the counts mean the same in reference to both applications. 
Weintraiib v. Hewitt, 124 0. G. 2534. 
The contentioti tEat the opposing parties do not have a 
construction responding to a certain language in the issue is 
one relating to the right to make the claim and not to inter- 
ference in fact — ISTo appeal. 

Carnell v. Glasgow v. Cook, 120 0. G. 901. 
There is no appeal from the decision of the Primary Ex- 
aminer affirming the opponent's right to make the claims or 
the identity of meaning of the claims in their respective ap- 
plications. 

Daggett V. Kaufmann, 127 0. G. 3641. 
A petition to review a decision affirming patentability, or 
the right to make the claim, and identity of meaning of 
counts, in the exercise of supervisory authority, will be con- 
sidered only in extraordinary cases. 

Lipschutz V. Floyd, 130 'O. G. 2718. 



Rule 124 APPEALS FROM ADVEESE DECISIONS. 532 

(4) Affirming Patentability. 

The Examiners-in-Cliief having allowed a claim corres- 
ponding to count five to Strouble, there is consequently no ap- 
peal from that decision. 

Coleman v. BuUard v. Strouble, 114 0. G. 973. 
The part of this rule denying an appeal in certain cases 
applies to appeals from the Examiners-in-Chief. 
Langslow v. Malocasy, 155 0. G. 1043. 
No appeal lies from the decisions of the Examiner-of- 
Trade-Marks adjudging that a party is entitled to the 
registration of a trade-mark. 

Sibley Soap Co. v. Lambert Pharmacal Co., 103 0. G. 
2173. 
It would be only in a very clear case that the Examiner's 
decisions affirming patentability would be reviewed on appeal. 
Einsche v. Sandherr, 105 0. G. 1780. 
There is no appeal from a decision of the Examiner hold- 
ing that the issue is patentable when construed broadly 
enough. 

Bachman v. Southgate, 111 0. G. 805. 
An appeal does not lie from a decision affirming patent- 
abilitv. 

White V. Thomson, 101 0. G. 2825. 
No appeal lies from the refusal of the Examiners-in-Chief 
to call attention to the question of patentability under Eule 
126. So long as this rule stands it must be enforced, and 
it has been approved by the different Commissioners. 
Benet & Mercie v. McClean, 97 0. G. 1595. 
The law makes no provision for an appeal from the favor- 
able decision of the Examiners-in-Chief affirming patent- 
abilitv. 

Barney v. Kellogg, 17 0. G. 1096. 
Last clause affirmed. 

Faure v. Bradley v. Crocker v. Cowles & Cowles, 40 0. 
G. 243. 
The supervisory authority of the Commissioner will be 
exercised to review a favorable decision on patentability only 
in very exceptional cases. 

Read v. Scott, 101 0. G. 449. 
When the Examiner has decided in favor of the patent- 
ability of claims, it would seem that the right of the oppos- 
ing partv to raise this issue was at an end. 
Sobey v. Holsclaw, 119 0. G. 1922. 
The validity of this rule, as to denying an appeal in deci- 



533 APPEALS FROM ADVERSE DECISIONS. Rule 124 

sions affirming patentability of a claim, affirmed by the 

Supreme Court of the United States, two justices dissenting. 

U. S. ex rel. Lowry v. Allen, Com., 125 0. G. 2365. 

(5) Amendments. 

The fact that there has been a "final rejection" in the 
course of the interference should not be taken to mean, as 
the applicant seems to fear it may, that further amendments 
will not be permitted except as an act of grace or leniency. 
Sanders v. Hawthorne v. Hoyt, 125 0. G. 1347. 
This rule does not authorize amendment of the claims dur- 
ing the interference. 

Sanders v. Hawthorne v. Hoyt, 125 0. G. 1347. 

(6) ReJiearings. 

There is no appeal from a decision refusing a rehearing. 
Carmichael v. Fox, 104 0. G. 1656; Bryon v. Henry, 
104 0. G. 1895; Eeynolds v. Bean, 101 0. G. 2821; 
Eoemer v. Neumann, 49 0. G. 1535 ; Cole v. Zarbock 
V. Greene, 116 0. G. 1451. 
The question of res adjudicata may be raised at any time, 
and may be raised by any tribunal of its own motion. 
Carroll v. Hallwood, 135 0. G. 896. 
If the claims could have been raised under the first trial 
they cannot be reheard. 

Carroll v. Hallwood, 135 0. G. 896. 
The court of appeals held that where in an interference 
it was held that neither party had a right to make the claim 
and the time for appeal had expired, that the matter was 
res adjudicata and could not be presented by one of the 
applicants prosecuting his application ex parte. 
Herbst, 141 0. G. 287. 

(7) Assignment of Error. 

A question involving the right of an applicant to make the 
claim in interference will not be passed upon by the Com- 
missioner on appeal from the decision of the Primary Ex- 
aminer upon a motion to dissolve the interference. 

Sweeney v. Jarvos, 1892 C. D. 97; Pryor v. Ball v. 
Brand, 119 0. G. 653; Weintraub v. Hewitt, 124 0. 
G. 2534. 
Example of assignment of reasons. 

Carroll v. Hallwood, 135 0. G. 896; Phillips v. Lensenich, 
134 0. G. 1806. 
We think the question of res adjudicator was preserved in 



Rule 124 APPEALS FEOM ADVERSE DECISIONS. 534 

the assignment of error which assails the decision of the 
Examiner of Interferences in awarding priority on the whole 
case. 

Carroll v. Hallwood, 135 0. G. 896. 
On an appeal on priority the court will not review the 
finding of the Commissioner upon the sufficiency of a showing 
to support a petition for the reinstatement of an abandoned 
application where there appears to have been no abuse of 
power on the part of the Commissioner. 
Kinsman v. Strohim, 136 0. G. 1769. 
Where no irregularity in declaring the interference inde- 
pendent of the allegation of non-interference in fact was 
presented, held that the appeal as to the ground of irregularity 
in declaration would be dismissed. 

Walker v. Brunhoff, 118 0. G. 3537; Blackmore v. Hall, 
118 0. G. 2538. 
Where the Examiner dissolves the interference because the 
issue is not patentable. Held, that an appeal relating to inter- 
ference in fact involves a moot question, and will not be de- 
termined. 

N'ewell V. Hubbard, 115 0. G. 1847. 
There is no appeal from tlie Examiner's action holding 
that the counts are patentable, and therefore the sole ques- 
tion to be determined is whether the counts in question are 
the same when applied to the structure of both parties. 
Anderson v. Vrooman, 123 0. G. 2975. 
Questions cannot be raised on appeal which have not been 
raised by the motion and passed on below. 

Larkin Company v. Pacific Coast Borax Co., 132 0. G. 
679. 
Where it has been decided that one of the parties to the 
interference has no right to make the claims^, the question of 
interference in fact is a moot question and will not be con- 
sidered on appeal. 

Selden v. Gerts & Palmer, 105 0. G. 1531. 
Eight to make claims and patentability will not be reviewed 
upon appeals on non-interference in fact, and irregularity in 
declaration. 

Thullen v. Young & Townsend, 118 0. G. 2251. 
On appeal on question on priority, patentability will not 
be considered'. 

Fairbanks & Sauer v. Karr, 119 0. G. 651. 
Where on an appeal to the Commissioner on the question 
of interference in fact it appears from the opinion of the 
Primary Examiner and the brief of the appellant that the 



535 APPEALS FROM ADVERSE DECISIONS. Eule 124 

real question is one relating to the right to make the claims, 
the appeal will be dismissed. 

Sehofield v. McGovern v. Woods, 119 0. G. 1924. 
Contentions which go to the right of a party to make 
claims can afford no proper basis for dissolution upon the 
ground of non-interference in fact. Appeal dismissed. 

Blackmore v. Hall, 119 0. G. 2523; Blackmore v. Hall, 
120 0. G. 1477. 
The decision of Primary Examiner affirming patentability 
will not be reviewed in an appeal relating to other grounds 
permitted by Eule 122. 

Wilkinson v. Junggren, 112 0. G. 252. 
This appeal while nominally on appealable grounds is 
really for the purpose of -getting a review of the Examiner's 
decision affirming patentability and applicant's right to make 
the claims. It is therefore dismissed. 
Forsyth v. Emery, 113 0. G. 2215. 
iVn affirmative decision upon the right of the appellee to 
make the claim is not appealable and will not be considered 
in an appeal on other grounds. 

Kinney v. Goodhue, 123 0. G. 1663. 
A new appeal fee must be paid on the appeal denying the 
patentability of a claim in an inter partes matter notwith- 
standing an appeal has been once taken on that point on an 
ex parte matter. 

Cheney v. Venn, 125 0. G. 1703. 
Applicant's claims were involved in two interferences. A 
motion has been made in each on the ground of lack of 
patentability, which was granted. Held that one appeal fee 
was sufficient. 

Miller v. Mann v.. Bacon v. Torrance, 115 0. G. 1063. 
Where an interference is dissolved by the Primary Ex- 
aminer on motion, appeal cannot be taken by the party 
bringing such motion, though granted on a part only of the 
grounds urged therein. 

Zeitinger v. Reynolds v. Mclntire, 1891 C. D. 212; Eies 
V. Thomson, 1891 C. D. 233. 

No valid reason appears to exist for making an exception 
where the motion is appealable to the Examiners-in-Chief and 
in allowing only one party to the contested proceedings to 
appear and be heard. 

Duncan v. Westinghouse, Jr., 66 0. G. 1005. 
When both parties move to dissolve the interference upon 
all grounds permitted by the rules and the motions are 
granted, held that an appeal will not be entertained since 



Rule 124 APPEALS FROM ADVERSE DECISIONS. 536 

a party cannot appeal from a decision in his favor merely 
because he disagrees as to the reason. 
Scott V. Badeau, 116 0. G. 2007. 
Favorable decision not appealable. 

Potter V. Mcintosh, 116 0. G. 1451. 
Where a review is requested by G. of Examiner's rulings 
upon the meaning of claims in his decision granting G.'s 
motion for dissolution, held that G. was not entitled to such 
review: his motion for dissolution as to counts embodying 
the substance of these claims having been granted. 
Votey V. Gaily, 119 0. G. 339. 
Where a party made no motion for dissolution he cannot 
appeal from the refusal of a motion made by another party. 
Townsend v. Copeland v. Eobinson, 119 0. G. 2523. 
The supervisory authority will not be exercised to review 
a favorable decision on the question of patentability except 
in a very clear case. 

Eschinger v. Drummond & Lieberknecht, 121 0. G. 1348, 
There is no reason, as was pointed out in Miller v. Perham, 
121 0. G. 2627, why the Office, having once decided that a 
party is entitled to make certain claims should reconsider 
the question on the party's own motion. 
Goodwin v. Smith, 123 0. G. 998. 
It is the substance of the decision which determines whether 
it is appealable to the Commissioner and not the reason given 
by the Examiner. 

Von Welsbach v. Lungren, 48 0. G. 537. Cited, 85 0. 
G. 1738. 
Only one injured may appeal. 

Judd V. Compbell, 110 0. G. 2017. 
Ko appeal from favorable decision. 

Cazin v. Von Welsbach, 119 0. G. 650. 
Last clause. A petition will not be entertained except in a 
clear case, to review a favorable decision. 

Denton et al. v. Eiker, 98 0. G. 415. 
Non-appeal lies from a refusal to declare an interference 
with an existing patent accompanied by an allowance of ap- 
plicant's claims under the last clause. 
Gibboney, 105 0. G. 976. 
When ample opportunity to introduce a prior application 
is given, and the matter will be reviewed on appeal, a case 
will not be reopened because of difference of interpretation 
given by the Primary Examiner and the Examiner of Inter- 
ferences. 

Dixon V. Bliss, 185 0. G. 1381. 



537 APPEAliS PEOM ADVEESE DECISIONS. Rule 124 

(8) Decision of the Commissioner. 

The judgment of the Examiner will not be controlled by an 
order made in advance, 

Marks v. Greenawall, 118 0. G. 1967. 
An appellant will not be heard to argue that an interfer- 
ence should be dissolved, upon the ground under Rule 122, 
not argued before the Examiner. 

Plingst V. Anderson, 118 0. G. 1067. 
Last clause. This clause may not be avoided by consider- 
ing the standing of the application as evidence. 
Shupphaus v. Stevens, 95 0. G. 1452. 
The Commissioners may, upon appeal upon points not in- 
volving the question, declare that there is no conflict in fact. 
Schupphaus v. Stevens, 95 0. G. 1454. 
Does not prevent the Commissioner from considering any 
reason for dissolving an interference which may be brought 
to his attention or which he may discover. A petition will 
not be entertained when it seeks to obtain indirectly a re- 
view of an Examiner's decision from which no appeal lies, 
by merely misnaming the proceedings. 
Goss V. Scott, 96 0. G. 844. 
Decision of Primary Examiner. When a motion to dissolve 
is brought upon the grounds specified in Eule 122 the Ex- 
aminer should decide the motion upon all grounds, and if 
the decision is of such a nature that appeal therefrom may 
be taken he should fix a limit of appeal. 

Duryea & White v. Rice, 115 0. G. 803. 
If appealable grounds are presented an appeal may not be 
refused by an Examiner because he chooses to decide the 
motion upon unappealable grounds. 

Silverman v. Hendrickson, 88 0. G. 1703. 

(9) Time when Taken — Excuse for Delay — Petition to Extend 

Time. * 

An appeal from a decision on a motion will not be enter- 
tained and considered nunc pro tunc after the limit of appeal 
has expired, because of a showing that it was the intention 
to appeal and the failure was due to a misunderstanding be- 
tween attorneys. 

Gerdon v. Ehrhardt, 116 0. G. 595. 

No limit of appeal was set by the Examiner of Interferences, 
which should have put appellant upon notice that the Exam- 
iner did not regard the question decided as an appealable 
one; under such circumstances appeal should be taken 
promptly, if at all, in order that opposing parties may not 



Rule 124 APPEALS FROM ADVERSE DECISIONS. 538 

proceed under a misapprehension as to the condition of the 
case. 

Geo. Wostenholm & Son, Limited, v. Crowley, 135 0. G. 
1121. 
Kegligence or oversight of attorneys not sufficient excuse 
for not taking appeal within the time limited. 
. Brissenden v. Eoesch, 118 0. G. 3253. 
An appeal filed after the expiration, the limit of appeal will 
be entertained only in very unusual and extraordinary cases. 
Briggs V. Conley, 104 0. G. 1119 ; Blackman v. Alex- 
ander, 105 0. G. 2059 ; Kiltzker and Goesel v. Donan, 
109 0. G. 1336; Greuler v. Mathew, 112 0. G. 253; 
Gerdon v. Ehrhardt, 116 0. G. 595; Brisender v. 
Eoesch, 118 0. G. 2253; Townsend v. Ehret, 125 0. G. 
2051; Wenzelmann and Overholt, 123 0. G. 995; Mc- 
Keen v. Jerdone, 134 0. G. 2027. 
It is thought the Commissioner has authority to permit an 
appeal after the limit. 

McKeen v. Jerdone, 134 0. G. 2027. 
Since the defeated party failed to take his appeal within 
the limit set, he is not now entitled to have that decision' 
reviewed by another tribunal. 

Briggs V. Conley, 104 0. G. 1119. 

A limit of appeal should be set in decisions denying a right 
to make a claim. 

Judd V. Campbell, 110 0. G. 2016. 
Where in an interference it is decided that one of the par- 
ties has no right to make the claim, it seems clear that it is 
not just to the other party to withhold indefinitely his appli- 
cation, which is ready to issue, merely to await the pleasure 
of the other party. A limit of appeal should be set. 

Hutin V. LeBlanc v. Steinmetz v. Scott v. Fairfax, 97 
0. G. 2744. 
The exercise 5f discretion in refusing to longer continue the 
case in order to give appellant further time to file his pre- 
liminary statement is not subject to review by us, unless it 
clearly appears from the record that the rights of appellant 
have been prejudiced by an unwarranted departure from the 
law or rules of procedure regulating proceedings of this kind 
in the Patent Office. 

Hallowell v. Darling, D. C. App. ; Churchill v. Good- 
win, 141 0. G. 569. 
No appeal from a decision of the Examiner extending time 
for taking testimony. It can only be modified by the exercise 



539 APPEALS EEOM ADVERSE DECISIONS, EuIg 124 

of the supervisory authority of the Commissioner, and this 
only in unusual cases. 

Wickers & Furlong v. Weinwurm, 129 0. G. 2501; The 

Shaw and Willy Shirt Co. v. The Quaker City Shirt 

Mfg., 157 0. G. 1000. See, however. Kinsman v. 

Strohm, 125 0. G. 1699. 

The bringing of motions or the taking of petitions to the 

Commissioner will not stay the running of the limit of appeal 

from a decision on priority. 

Pym V. Hadaway, 131 0. G. 692. 

(10) To the Board or to the Commissioner. 

Appeal denying motion to dissolve for non-interference in 
fact is to the Commissioner and not to the Board. 
Zeidler v. Leech, 1891 C. D. 9. 
A motion of one party to amend his application by inserting 
two claims taken from his opponent's application, not appeal- 
able directly to the Commissioner. 

Berry v. Fitzsimmons, 99 0. G. 863. 
Interference in fact appealable to Commissioner in person. 
Oldham & Padbury v. Peck v. Clement v. Eichards, 99 
0. G. 670. 
Appeal, from decision dissolving interference because there 
is no right to make the claims, appealable to Examiners-in- 
Chief. 

Story V. Criswell, 100 0. G. 683. 
An appeal from an action holding that there is no such 
combination does not lie to the Commissioner. 
Webber, 98 0. G. 2362. 

(11) Decisions of the Board. 

If the Examiners-in-Chief are equally divided, the Primary 
Examiner is affirmed, and upon questions of patentability 
there is no appeal. 

Porter v. Mcintosh, 120 0. G. 1823. 
The only question that can be presented to the Board, under 
the statute, on an appeal in an interference case upon the 
merits, is priority of invention. The Board has no right to 
make the question of whether there is an interfering matter 
in the device a part of their decision. 
Brown v. La Dow, 18 0. G. 1049. 
Xo appeal from favorable decision of the Board on questions 
of right to make the claim. 

Joslevn V. Hulse, 132 0. G. 844; Coleman v. Bullard v. 
Struble, 114 0. G. 973. 



Rule 125 DETEEMINATION. 540 

(12) Miscellaneous. 

Cases that pass on the subject matter of this rule. 

Mill V. Midgley, 136 0. G. 1534; Harnisch v. Gueniffet, 
Benoit and Meault, 128 0. G. 455; Bechman v. South- 
gate, 123 0. G. 2309. 

Last clause. 

In re Locke, 94 0. G. 432; Myers v. Sarfert, 96 0. G. 
1037; Eeece v. Fenwick, 97 0. G. 188; Hinkley v. 
Barker, 97 0. G. 2742; Sharer v. McHenry, 91 0. G. 
1034; Wheeler v. Seeberger, 125 0. G. 2363; Hopfelt 
V. Eead, 106 0. G. 767; Myers v. Brown, 112 0. G. 
2093-4; Schubert v. Munro, 113 0. G. 284-3; Gully v. 
Brand, 113 0. G. 852; Harnisch v. Gueniffet, Benoit & 
Meault, 117 0. G. 1492-3; Allen, Commissioner, v. 
U. S. ex rel. Lowry.et al., 116 0. G. 2254-3; Neth v. 
Tamplin v, Ohmer, 120 0. G. 323; Brewer, Tily, Eeh- 
fuss & Eehfuss v. Dement, 116 0. G. 2010; Duryea 
& White' V. Eice, 123 0. G. 2627; Locke v. Baldwin, 
124 0. G. 317; Harnisch v, Gueniffet, Benoit & 

. Meault, 128 0. G. 355. 

Rule 125. Determination. 

After an interference is finally declared it will not, 
except as herein otherwise provided, be determined 
without judgment of priority founded either upon the 
evidence, or upon a written concession of priority, 
or upon a written disclaimer of the invention, or upon 
a written declaration of abandonment of the inven- 
tion, signed by the inventor himself (and by the as- 
signee, if any). 

CONSTRUCTIONS. 

Both applications owned by the same party — one applicant 
could not be found. 

Schreiber v. Bauer, 258 0. G. 813. 
Both parties moved to dissolve because of non-patentability. 
They might simultaneously file abandonment. 

Krakaw v. Harding, 107 0. G. 1662; Tomlinson v. Eiely, 
183 0. G. 784. 
A declaration of abandonment should not give reason there- 



541 DETERMINATION. Rule 125 

fore. But one containing such reasons should not be stricken 
from the files. 

Carrington v. Turner, 136 0. G. 1067; Clutcault v. The 
l\^ew York Herald Company, 136 0. G. 437. 
Copy of a record under this rule. 

Carroll v. Hallwood, 135 0. G. 896-7. 
The inventor of his representative must sign the concession 
of priority even when the entire interest has been assigned. 
Alt. V. Carpenter, 133 0. G. 1587. 
Where applicant moves for dissolution upon ground of non- 
patentability and his opponent is involved upon a regularly 
issued patent and the motion is brought after the expiration 
of the time for taking testimony and no testimony has been 
taken, held that the practice announced in Lipe v. Miller, 109 
0. G. 1068, should not be followed and that the case should 
proceed to judgment. 

Smith v. Slocum, 123 0. G. 1990. 
An unequivocal, unconditional, unlimited declaration of 
abandonment of the invention which forms the subject-matter 
of the issue of the present interference is the only abandon- 
ment which can be filed under this rule. 
Gabrielson v. Felbel, 121 0. G. 691. 
The declaration must be unequivocal and absolute. 

Gabrielson v. Felbel, 1906 C. D. 108, 121 0. G. 691. 
If during an interference a patentee applies for and obtains 
a reissue omitting the interfering claims, a motion for disso- 
lution should be made and allowed. 

Lattig & Goodrum v. Dean, 117 0. G. 1798. 
One can not be adjudged the prior inventor u.pon the con- 
tention that his opponent's application does not disclose the 
issue. The contention, if sound, warrants dissolution, not 
judgment. 

Jenner v. Dickinson v. Thibodeau, 116 0. G. 1181. 
If one of the parties applies for a reissue omitting claims 
involved, this is to be regarded as a written concession of 
priority and judgment under this rule rendered accordingly. 
Lattig & Goodrum v. Dean, 115 0. G. 505. 
When an interference has been decided upon its merits, 
the judgment will not be set aside on a concession of priority 
by the successful party. 

Humphrey v. Fickert, 112 0. G. 2094. 
A judgment rendered upon a technicality reversed upon a 
concession of priority by the successful party. 

Couper & Somers v. Bannister, 112 0. G. 1480. 



Rule 126 STATUTORY BAR SUGGESTED. 542 

The signature of the inventor is necessary to abandonment. 

Skinner v. Murray, 107 0. G. 542. 
TJie rules nowhere provide for a determination of an inter- 
ference after it has been once declared on a mere cancella- 
tion of the claims. 

Eead v. Scott, 100 0. G. 449, 1902 C. D. 242. 
A former decision should be rendered by the Primary 
Examiner. The practice should follow that under Eule 122. 
Macey v. Tobey v. Laning, 97 0. G. 1172-3, 1901 C. D. 
168. 
Eule may not be evaded by means of a protest. 
Schweitzer, 97 0. G. 1171, 1901 C. D. 179. 
Where the structure of one of the parties to an interference 
is inoperative, priority of invention can not be awarded to 
him. 

Glidden v. Noble, 67 0. G. 676, 1894 C. D. 51. 
Cancellation of the claims is not sufficient. 

Curtis V. Marsh, 92 0. G. 1236, 1900 C. D. 127. 
The withdrawal of one of the applications does not end 
the interference. 

Adler v. Van Wagener, 1875 C. D. 123 ; to the contrary, 
see Eames & Selley v. McDougal, 1871 C. D. 206. 
If public use for more than two years is shown by pre- 
liminary statement the interference should be dissolved. 
Schenck v. Eider, 1870 C. D. 135. 
This rule was part of the rules of practice in 1871. See 
Eule 59 quoted in 

Eames & Seeley v. McDougall, 1871 C. D. 206. 

Rule 126. Statutory Bar Suggested. 

The examiner of interferences or the examiners in 
chief may, either before or in their decision on the 
question of priority, direct the attention of the Com- 
missioner to any matter not relating to priority which 
may have come to their notice, and which, in their 
opinion, establishes the fact that no interference ex- 
ists, or that there has been irregularity in declaring 
the same (Rule 122), or which amounts to a statutory 
bar to the grant of a patent to either of the parties 
for the claim or claims in interference. The Com- 
missioner may suspend the interference and remand 



543 STATUTORY BAR SUGGESTED. Rule 126 

the case to the primary examiner for his considera- 
tion of the matters to which attention has been di- 
rected. From the decision of the examiner appeal 
may be taken as in other cases. If the case shall not 
be so remanded, the primary examiner will, after 
judgment, consider any matter affecting the rights of 
either party to a patent which may have been called 
to his attention, unless the same shall have been pre- 
viously disposed of by the Commissioner. 

HISTORY. 

Eule 120 of 1879 reads : "In their decision of the question 
of priority, or before such decision, the examiner of inter- 
ferences and the examiners-in-chief will direct the attention 
of the commissioner to any fact not relating to priority which 
may have been brought to their notice (by motion or other- 
wise), and which in their opinion amounts to a statutory 
bar to the grant of a patent to either of the parties for the 
claim or claims in interference. 

The commissioner may, before Judgment on the question 
of priority of invention, suspend the interference, and re- 
mand the case to the primary examiner for the consideration 
of the statutory bar so suggested, subject to appeal to the 
examiners-in-chief, as in other cases. If the case shall not be 
so remanded, the primary examiner will, after judgment, 
consider and determine the same, unless it shall have been 
previously disposed of by the commissioner." 

Eule 59 of 1878 reads in part as follows : "In their deci- 
sion of the question of priority, or before such decision, the 
examiner of interferences, or the examiners-in-chief, as the 
case may be, will direct the attention of the commissioner to 
any fact not relating to priority which may have come to 
their attention (by motion or otherwise), and which, in their 
opinion, amounts to a statutory bar to the grant of a patent 
to either or both parties. After final judgment the primary 
examiner will consider and determine any such matter not 
previously disposed of by the commissioner." 

J find no provision in the Eules of September 1, 1873. 

CONSTRUCTIONS. 

A petition for public use proceedings to prove the use of 
anticipating machinery as much as twelve years and more 
ago. Held, insufficient where it was unaccompanied by a 



Rule 126 STATUTORY BAE SUGGESTED. 544 

print, photograph or like evidence as to the alleged antici- 
pating structure. 

Dwiggins, 229 0. G. 1573. 
If no motion to dissolve under Rule 122 has been made 
action under this rule should be taken only when the case is 
perfectly clear. 

White V. Wege, 227 0. G. 1107. 
Question of statutory bar not in issue in interference pro- 
ceedmo's. 

Johnson v. Martin, 201 0. G. 267. 
There is nothing in the showing to indicate that the al- 
leged use was public rather than private, or that the alleged 
use in public was more than an abandoned experiment. 
Price V. Adamson, 197 0. G. 1291. 
An applicant in interference with patentee can not get 
an adjudication of the question of the patentability of the 
counts under this rule. 

Patterson v. Weher, 192 0. G. 215. 
The petition should be served upon the opposing party 
and an offer to produce the witnesses and to bear the ex- 
pense of investigation. 

Duellen v. Claussen & Glaus, 190 0. G. 265; Seebert 
V. Bloonberg, 124 0. G. 628. 
Proceeding outlined in a public use proceeding. 

Betts V. Gerson, 189 0. G. 524. 
Public use proceedings can not determine the issue of 
priority. 

Wenzelmann and Cloverholt, 180 0. G. 1394; Kennedy 
V. McLain, 158 0. G. 547. 

Eule 130 provided that a party may urge that his opponent 
has no right to make the claims of the issue at final hearing, 
provided he has prosecuted a motion under Rule 122 for 
dissolution upon this ground. While it is not the practice 
where the junior party is under an order to show cause for 
the Examiner of Interferences of his own motion to set a 
case down for hearing under Rule 130, it is the practice to 
grant such a hearing where a motion or request, therefore, is 
made before, or within a reasonable time after the entry of 
judgment on the record. 

"Koble v. Levin, 180 0. G. 602. 
Testimony being proposed in a proper showing. 
This rule not applicable where the party is not entitled 
to make claim. See note to Rule 130. 

McBerty v. Shore and Shore, 175 0. G. 843. 
The question of public use is considered a question separate 



545 STATUTORY BAR SUGGESTED. Rllle 126 

from that of priority of invention raised in an interference 
proceeding and to require a separate investigation. It is not 
the practice to suspend an interference proceeding when at 
the present stage^ in order to investigate public use, especially 
where the bar, if established, would apply only to the appli- 
cation of one party. 

Perrault v. Pierce, 98 0. G. 793, 108 0. G. 2146, 131 

0. G. 942; Kneisly v. Kaisling, 174 0. G. 830. 

Public use proceedings are instituted only upon formal 

petition, accompanied by proof of service upon the applicant 

together with an offer to produce the witnesses and to bear 

the expenses of the investigation. 

Kneisly v. Kaisling, 124 0. G. 628, 174 0. G. 830. 
A petition for public use proceedings postponed to await 
the outcome of a motion to dissolve. 

Snyder v. Woodward, 173 0. G. 863. 
Will not suspend action in an interference proceeding 
where testimony has been taken and the case is ready for 
final hearing in order to institute public use proceedings. 
(Deoble v. Henry, 118 0. G. 2249; West v. Borst and 
Grosch, 122 0. G. 2062.) 

Brenizer v. Eobinson, 166 0. G. 1281. 
The motion is informal, since the Commissioner and not 
the Primary Examiner is the official who determines whether 
a public use proceeding should be instituted. (Hartley, 136 
0. G. 1767; Ptolfe, 155 0. G. 799.) 

Benizer v. Eobinson, 166 0. G. 1281. 
Some counts two and five are held to be unpatentable, the 
question of whether the Curtis structure covered thereby is 
operative or is a moot question which it would serve no use- 
ful purpose to determine in the interference proceeding. 
(100 0. G. 683, 105 0. G. 1531, 111 0. G. 2492, 115 0. G. 
1847.) 

Inasmuch as the interference now stands dissolved, the 
question of what claims Curtis may be entitled to is one for 
ex parte consideration. 

Curtis V. Kleinert, 160 0. G. 1038; Yarnell v. Pope, 
115 0. G. 2136. 
The right of his adversary to make the claim at issue has 
been uniformly held to be ancillary to the question of pri- 
ority of invention. This is also true where it is urged by 
a moving party that his opponent has no right to make the 
claim for the reason that the device shown in the applica- 
tion is inoperative. In the latter case the moving party has 
upon presentation of a sufficient showing been permitted the 



Eule 126 STATUTOEY BAR SUGGESTED. 546 

right to take testimony to show that his opponent's device is 
inoperative. 

Barney v. Hess, 158 0. G. 7.02. 
Patentability was denied claims of an applicant that had 
inadvertently been patented to another. The Court of Ap- 
peals says, "In view of the inadvertence of the Patent Office 
in granting a patent which is now beyond the control of the 
Office it would probably have been more equitable practice to 
have assumed patentability for the purpose of determining the 
question of priority. 

Orcutt, Etc., 141 0. G. 567. 
Ordinarily the protestant is ignorant to a greater or less 
extent of the contents of applicant's case, and the Office is 
not warranted in giving the protestant information of the 
application or in offering him an opportunity to gain such 
information. The privilege of filing a brief gives the protest- 
ant all the privileges to which he is entitled. 

Henry, Jr., 140 0. G. 508. 
In public use proceedings it is customary merely to set a 
time within which the parties, the protestant as well as the 
applicant, may file briefs, with the Primary Examiner. 

In re Henry, Jr., 140 0. G. 508. 
A motion to require joint applicants to show by testimony 
that they are in fact joint inventors of the invention in issue, 
refused. 

Pickard v. Ashton v. Curtis, 137 0. G. 732. 
Public use proceedings are ex parte in their nature, the 
sole question being whether the applicant is barred from ob- 
taining a patent on the invention claimed by reason of the 
public use or sale of devices embodying the invention claimed. 

Hartley, 136 0. G. 1767. 
The affidavits presented by the protestant were deemed 
sufficient to lay the foundation for the introduction of tes- 
timony, but thev are not themselves testimony. 

Hartley, 136 0. G. 1767. 

While it is the practice to permit one of the general public 

to file a protest and to take testimony in behalf of the Patent 

Office upon this question, such party has no right in the 

controversy other than those authorized by the Commissioner. 

Hartley, 136 0. G. 1767. 
A motion to take testimony as to inoperativeness of op- 
ponent's apparatus, brought in the regular course of the 
proceedings, aifords petitioner an adequate remedy without 
the necessity of invoking the supervisory authority of the 



547 STATUTOEY BAE SUGGESTED. Rule 126 

Commissioner, and should be determined in the first instance 
by the Examiner of Interferences. 

Lowry & Cowley v. Spoon, 122 0. G. 2687; Barber v. 
Wood, 132 0. G. 1588. 

The question whether one of the parties to an interference 
proceeding is debarred from receiving a patent by reason of 
his having secured a foreign patent for the same invention 
is a question for ex purte consideration after the termina- 
tion of the interference. 

Gueniffet, Benoit and Nicault v. Wictorsohn, 134 0. G. 
255. 

A petition that a rule be issued against an opposing party 
to show cause why it should not be held that he has aban- 
doned his invention, and that petitioner be permitted to 
ofEer testimony upon such question, will not be entertained 
under the Commissioner's supervisory authority where the 
petitioner has other remedies and is in fact pursuing another 
remedy before the Examiner of Interferences. 

(Cases cited) Barber v. Wood, 132 0. G. 1588. 

Public use is considered in the practice of this Office as a 
separate question, requiring an investigation independent of 
the question of priority of invention involved in an inter- 
fering proceeding (96 0. G. 2409, 104 0. G. 577). No tes- 
timony has been taken and there is nothing in the case upon 
which the Primary Examiner at the present time can intel- 
ligently consider the bar of public use. ISTo error is found 
in the refusal to transmit on this ground. 
Barber v. Wood, 129 . G. 2835. 

It is thought that the commissioner should remand the 
case and not decide it himself. 

Serrel v. Donnelly, 129 0. G. 2501. 

A protest on the ground of public use was once dismissed 
because unaccompanied by an offer to produce witnesses and 
bear expenses. It is now dismissed because affidavit set up 
conclusions instead of facts. Applicant should present this 
case as well as may be done by affidavits so as to give the 
opponent an opportunity to intelligently oppose the insti- 
tution of the proceeding and the consequent delay. 

Booth, 128 0. G. 1291; Wickers & Furlong v. McKee, 
129 0. G. 1269. 

A protest on the ground of public use was once dismissed 
because unaccompanied by an offer to produce witnesses and 
bear expenses. It is now dismissed because affidavits set up 
conclusions instead of facts. Applicant should present his 
case as well as can be done by affidavits so as to give the 



Rule 126 STATUTORY BAE SUGGESTED. 548 

opponent an opportunity to intelligently oppose the institu- 
tion of the proceedings and the consequent delay. 
Booth, 128 0. G. 1291. 
An appeal should be allowed where permission to take the 
testimony is refused. 

Pym V. Hadury, 128 0. G. 457. 
It is designed by the practice instituted in this case to 
avoid these complications, in those cases where the recom- 
mendations of the examiners-in-chief covers matters consid- 
ered and passed upon by the Primary Examiner in an inter 
partes decision, by substituting at the outset the entry of a 
rejection Pro Forma by the Primary Examiner putting the 
case at once in a condition for a course of appeals which 
may be carried to the Court of Appeals. 

Holz V. Hewitt, 127 0. G. 1992. (See Bunnell, 103 0. 
G. 1993.) 
Petitioner has not made such a showing as would warrant 
institution of public use proceedings. (Siebert v. Bloomberg, 
124 0. G. 628.) 

Barber v. Wood, 137 0. G. 1991. 
The affidavits fail to make out a prima facie case of public 
use of the invention more than two years prior to Siebert's 
filing date. They state the conclusions of the witnesses 
largely to the exclusion of the facts upon which such con- 
clusions are based. Where facts are given they are not re- 
cited with - sufficient particularity and certainty. A portion 
of the showing is also objectionable as hearsay. The Office 
should not institute a proceeding that may uselessly consume 
the time and labor of all parties upon such a showing. 
Siebert & Bloomberg, 124 0. G. 628. 
Thought that it would be an improvement if the Exam- 
iner of Interferences in these cases would make his opinion 
the bases of a judgment of priority of invention instead of 
calling attention to the supposed facts under Eule 126. 

Brown v. Hodgkinson, 123 0. G. 2973. Cites Podlesak 
& Podlesak v. Mclnnerney, 120 0. G. 2127; Allen, 
Commissioner of Pats., v. The U. S. of America ex 
rel. George A. Lowry & Planters Compress Co., 116 
0. G. 2253. 
The proper practice when a case is referred to the Primary 
Examiner upon suggestions by the Examiners-in-Chief of 
lack of right of a party to make claims, and the Primary 
Examiner disagrees with the conclusions of the Examiners- 
in-Chief,. is to refer the case to the Commissioner for decision. 
Duryea & White v. Eice, 123 0. G. 2627. 



549 STATUTOEY BAR SUGGESTED. Eule 126 

I see no reason why I should act to control the discretion 
of the Examiner of Interferences calling attention to matter 
under Eule 126 or refusing to call attention under that rule. 
Wert V. Borst & Groscop, 122 0. G. 2062; Munro v. 
Walker, 122 0. G. 2062; Andrews v. Nilson, 123 0. G. 
1667. 
A consideration of the affidavit and testimony referred to 
by the protestant makes it seem probable that such bar does 
exist. It is not necessary to analyze that testimony to deter- 
mine whether it is technically sufficient if true to prove pub- 
lic use. 

Ashton, 122 0. G. 730; Duryea & White v. Eice, Jr., 122 
0. G. 1395. 
Examiners thought one party had not disclosed the in- 
vention. 

The interference remanded to the Primary Examiner, to 
hear the parties and furnish his opinion as to the question 
raised, together with a statement of the reasons for his con- 
clusions. The examiner's opinion placed in the interference 
file, copies sent to the parties and the case returned to the 
Commissioner for decision upon the appeal. 
Kilbourn v. Hirner, 122 0. G. 729. 
Where all the evidence is before the Office upon which to 
base a final determination upon priority, such final determina- 
tion should in general be . reached before consideratian of 
ex parte rights is undertaken. 

Dunbar v. Schellenger, 121 0. G. 687. 
An interference will not be suspended for the purpose of 
considering the question of estoppel against One party where 
dissolution of the interference would apparently leave the 
way clear to the allowance of a patent to another party who 
may not be the first inventor. 

Dunbar v. Schellenger, 121 0. G. 687. 
This rule does not provide for the filing of motions (as 
for the return of the case to the Primary Examiner to de- 
termine a question of Statutory Bar). Motion entitled under 
it dismissed. 

Struble v. Young, 121 0. G. 340. 
A suggestion by the Examiners-in-Chief referred to the 
Primary Examiner who agreed. There is no conflict of 
opinion, because the Examiner previously thought differently, 
to warrant a review by the Commissioner. 
Snider v. Bunnell, 121 0. G. 338. 
The parties are therefore notified that the testimony al- 
ready taken will be used as a prima facie case in support of 



Rule 126 ■ STATUTOKY BAR SUGGESTED. 550 

the allegation of public use, and that if any one of them 
wishes to take testimony in explanation or rebuttal he must 
so notify the Office within 20 days. 

Medringhaus v. Marquard v. McConnell, 131 0. G. 337. 
It is thought that the Commissioner should remand the 
case and not decide it himself. 

Serrell v. Donnelly, 120 0. G. 2501. 
Eeference under Eule 126 consideration of merits of an 
application not postponed on account of possible erroneous 
decision on priority. 

Newell V. Clifford v. Eose, 119 0. G. 1583; Sobey v. 
Holsclaw, 119 0. G. 1922. 

The Examiner referred the case to the Commissioner be- 
cause he thought the first count patentable to C. in the inter- 
ference. ]Sr. V. C. V. E., and not patentable to K. or E: Held, 
that the two interferences should proceed. 
Newell V. Eose, 119 0. G. 337. 
The question of patentability and interference in fact were 
presented for consideration on motion but not pressed, and 
that they were argued before the Examiner of Interferences 
and the Examiners-in-Chief on final hearing and these tri- 
bunals asked to make a recommendation under Eule 126 and 
such recommendation was refused, these facts do not warrant 
a review by the Commissioner. 

Bell V. Flora, 117 0. G. 2362. 
If Carver is of the opinion that there is no invention in 
fact, he is not without remedy. The provisions of Eule 126 
are available when this case comes on for final hearing. 

Carver v. MciCanna, 117 0. G. 599; In re Mill, 117 0. 
G 904. 
If an applicant in contest with a patentee admits a statu- 
tory bar to himself the interference should be dissolved. 
Griffith v. Dodgson, 116 0. G. 1731. 
A case transmitted to consider patentability where one 
party was a patentee. The Office will not waste time decid- 
ing a moot question simply to avoid casting cloud upon a 
patent. 

Yarnell v. Pope, 115 0. G. 2136. 
Public use suggested by assignee of entire interest suffi- 
cient to warrant action by the Office. 
Cummings, 114 0. G. 2090. 
In the matter of trade-marks. 

Frank & Gutmann v. Macwilliam, 114 0. G. 542. 
Public use alleged against some of the counts, but not all. 



551 STATUTORY BAR SUGGESTED. E-ule 126 

Held that the question of public use if necessarily raised at 
all should be after the conclusion of the interference. 
Moss V. Blaisdell, 113 0. G. 1703. 

Originally there were two counts in the interference, but 
under the procedure set forth in Eule 126 one of these has 
been eliminated. 

Spaulding v. Norden, 112 0. G. 2091. 

If an alleged anticipating patent is discovered too late for 
a motion under Eule 122, it may still be called to the atten- 
tion of the Commissioner under this rule. 

Schrimer v. Lindemann & Stock, 111 0. G. 2222. 

It is held, therefore, that when the question upon which 
the Examiner and the Examiner of Interferences differ re- 
lates to the patentability of the claims or the right of one 
of the parties to make the claims, and thereby involves the 
merits of the invention, the interference should be referred 
to the Examiners-in-Chief ; but when the difference of opin- 
ion is merely upon formal matters, such as interference in 
fact or irregularity in declaring the interference, the case 
should be referred to the Commissioner for final determina- 
tion. 

Weber v. Hall, 111 0. G. 809. 

A mechanical application can not affect the burden of proof 
in interference between designs. 

McArthur v. Gilbert, 110 0. G. 2509. 

The question of public use may be determined inter partes. 
Mills V. Torrence, 110 0. G. 857; Judd v. Campbell, 110. 
0. G. 2017. 

Successful applicant did not think the invention patentable 
to him. Interference dissolved. 

Lipe V. Miller, 109 0. G. 1608. 

In an interference between an applicant and a patentee if 
the Examiner of Interferences is of the opinion that the ap- 
plicant is not entitled to make the claims, the case should be 
transmitted to the Primary Examiner for immediate determi- 
nation. 

Hall V. Weber, 109 0. G. 1607. 

The rule provides sufficiently for the consideration by the 
Office on its own motion of matters which might have been 
made the basis of the motion mentioned in Eule 122, but 
which were not so presented; and the action of the Examiner 
refusing to transmit will not be disturbed except in a clear 
case. 

Sturgis V. Hopewell, 109 0. G. 1008. 

It is contrary to usual practice to suspend an interference 



Rule 126 STATUTORY BAR SUGGESTED. 552 

between two applicants to investigate the question of public 
use. 

Perrault v. Pierce, 108 0. G. 2146. 
Where public use is shown by testimony regularly taken, its 
effect can not be overcome by ex parte affidavits, but only by 
evidence regularlv taken. 

Tournier, 108 0. G. 798. 
The question of patentability is ex parte in character, and 
if it becomes necessary to take testimony upon that question 
the Office will investigate in a proceeding independent of the 
interference. 

Steinmetz v. Hewitt, 107 0. G. 1972. 
• If both parties file an abandonment of the invention the 
Examiner of Interferences should call attention to this bar. 

Krakaw v. Harding, 107 0. G. 1662. 
The question of public use is, furthermore, one which can 
not properly be decided against Winter without' giving him 
an opportunity to take rebutting proofs, since that evidence 
was taken upon a different issue. 

Weber, 101 0. G. 2570; Winter v. Slick v. A^olkommer, 
107 0. G. 1659. 

The Examiner's action or failure to act imder this rule is 
not appealable. It is in effect a favorable decision as to the 
paten tabilitv of the claims. 

Woods 'v. Waddell. 106 0. G. 2017; Kempshall v. Sieber- 
lincr. 107 0. G. 541: Dittgen v. Parmenter, 107 0. G. 1098. 
Where he (the Primary Examiner) disagrees with the other 
tribunals, it is believed that the question should be regarded 
as unsettled and should be referred to a higher tribunal for 
decision. 

Snider v. Bunnell, 103 0. G. 890; Mills v. Torrence. 106 
0. G. 544. 
Under this rule, the Examiners-in-Chief may, if they deem 
it advisable, call the attention of the Commissioner to ' any 
matter not relating to priority which in their opinion estab- 
lishes the fact that no interference exists or that there has 
been irregularity in declaring the same or which amounts 
to a statutory bar to the grant of a patent to either party for 
the claim in interference. This is not, however, compulsory 
upon them, and if thev refuse to do so, no appeal lies. 

Walsh V. Hallbauer, 94 0. G. 223; Wilcomb v. Lasher, 
105 0. G. 743. 

The Examiner of Interferences was of the opinion that one 
applicant had no right to make the claims. The matter re- 
ferred to the Primary Examiner who thought applicant had 



553 STATUTORY BAR SUGGESTED. Rule 126 

such right. The matter was then referred to the Board who 
held that applicant had no such right. The Commissioner 
directed that a limit of time to appeal from the decision of 
the Board be set. 

Eobinson v.. Copeland, 105 0. G. 263. 

Public use proceedings not applicable to trade-marks. 
Dietz, 104 0. G. 1852. 

Public use is considered in the practice of this Office as a 
separate question, requiring an investigation independent of 
the question of priority of invention involved in an interfer- 
ence proceeding. Xo testimony has been taken, and there is 
nothing in the case upon which the Primary Examiner at the 
present time can intelligently consider the bar of public use. 
No error is found in the refusal to transmit on this ground. 
Davis V. Swift, 96 0. G. 2109 ; Shrum v. Baumgarten, 
104 0. G. 577. 

Such investigation, however, would not be made as a part 
of the interference, but as an independent proceeding. It 
would be made only upon motion for suspension for that 
purpose, accompanied by a satisfactory showing of public use 
and an expression of a willingness on the part of the moving 
party to produce the witnesses for examination and to bear 
the expense of the proceeding, including the expense of an 
officer detailed from the Office to conduct the proceeding. 
Shrum v. Baumgarten, 104 0. G. 577. 

Claims can not be rejected or held unpatentable upon such 
affidavits alone. 

Shrum V. Baumgarten, 104 0. G. 577. 

It is designed by the practice instituted in this case to 
avoid these complications in those cases where the recommen- 
dation of the Examiners-in-Chief covers matters considered 
and passed upon by the Primary Examiner in an ex parte 
decision by substituting at the outset the entry of a rejection 
pro forma by the Primary Examiner, putting the case at 
once in condition for a course of appeals which may be car- 
ried to the Court of Appeals. 

Holz V. Hewitt, 127 0. G. 1992; Greenawalt v. Mark, 
103 0. G. 1913. 

In public use proceedings the Patent Office alone represents 
the public and its approval is necessary to make any agree- 
ment affecting the merits of the case binding. 
Kephart, 103 0. G. 1914. 

It is the question, not the evidence, which is transmitted 
for consideration and determination. In passing upon a 
question so transmitted the Examiner may avail himself of 



Rule 126 STATUTOEY BAR SUGGESTED. 554 

any information which he may obtain throwing light upon 
the question. To prevent surprise, due and timely notice 
should be given of any facts to be considered which are not 
disclosed by the record. 

Greenawalt v. Mark, 103 0. G. 1913. 
Motion to transmit to Primary Examiner to consider ques- 
tion of two years' public use, noted by Examiner of Inter- 
ferences, also asking to have a foreign patent considered as 
an anticipation. Eefused. The evidence taken in an inter- 
ference can not without further proceedings be used as the 
basis for the rejection of claims on the ground of public sale 
of the invention. Questions relating to anticipatory matter 
should be raised by a motion to dissolve under Eule 122. 
Dittgen v. Parmenter, 103 0. G. 1164. 
The rules properly provide that a favorable decision by the 
Examiner upon the merits is not appealable; but at the same 
time they provide for review of such a decision in certain 
cases, not as a matter of right by the parties, but as a mat- 
ter of public policy. 

Snider v. Bunnell, 103 0. G. 890. 
The Board thought that no interference in fact existed and 
that one of the parties had no right to make the claim. Case 
remanded to Primary Examiner, who held that an interfer- 
ence existed and the party had a right to make, the claim. 
Case placed on Commissioner's docket for final decision. 
Snider v. Bunnell, 103 0. G. 890. 
The question as to whether one of the parties received 
knowledge of the invention from a third party will not be 
considered in an interference proceeding. Otherwise, if it 
is a question of originality between the parties. 
Trufant v. Prindle v.' Brown, 101 O' G. 1608. 
Public use proceedings instituted. 

Weber. 101 0. 0.^^2570; Snider v. Bunnell, 101 0. G. 
2572 ;Fessenden y. Potter. 101 0. G. 2823; Osborn v. 
Hotsapillar, 102 0. G. 1296-7. 
If the Examiner be of the opinion that certain actions 
should be made in an application which is involved in an in- 
terference, and said actions relate to matters which do not 
in any way relate to or affect the interference then pending, 
the proper practice to follow is for the Examiner to file a 
request with the Commissioner that jurisdiction of the case 
be restored to him for the purpose of making such action. 

Hildreth, 97 0. G. 1374; Felbel y. Oliver, 100 0. G. 
2175-6: Read y. Scott, 101 0. G. 449. 

Primary Examiner and Board take different views. 
Thomson v. Weston, 94 0. G. 986. 



555 STATUTORY BAE SUGGESTED. Rule 126 

Two years' public use in designs. 
Fournier, 94 0. G. 3166. 

Whether or not the Board shall suggest statutory bar, etc., 
is optional with them and can not be reviewed on appeal. 
Walsh V. Hallbauer, 94 0. G. 223. 
The question of statutory bar considered by Commissioner 
upon appeal on question under Eule 122. 
Yaliquet v. Jolinson, 92 0. G. 1795. 
The Commissioner may take notice of these matters on his 
own motion. 

Anderson & Dyer v. Lowry, 89 0. G. 1861; Larter v. 
Jones, 92 0. G. 383. 

In the public use proceeding a copy of an application in- 
volved refused protesting party. 

aSTational Phonograph Co., 89 0. G. 1669. 
Bar arising should not be considered during the interfer- 
ence proceeding by subordinate tribunal, but referred to Com- 
missioner. 

Paget V. Bugg, 89 0. G. 1342. 
Interference suspended to take testimony relative to public 
use proceedings, without a recommendation. 
Sanford Mills v. Aveyard, 88 0. G. 129. 
Where the structure of one of the parties to an interfer- 
ence is inoperative, priority of invention can not be awarded 
to him. 

Glidden v. Noble, 67 0. G. 676. 
With the small sum appropriated by Congress for conduct- 
ing public use proceedings the Patent Office is not justified 
in instituting such proceedings unless a strong prima facie 
case is made. 

Fay V. Conradson, 65 0. G. 75. 
The establishment of abandonment or of two years' public 
use requires joroof so clear as to put the matter beyond all 
reasonable doubt. 

Bury V. Thompson, 58 0. G. 1255. 
The invalidating two years' public use of the statute does 
not require the knowledge, allowance or consent of the in- 
ventor. 

Drawbaugh, 57 0. G. 546. 
The interference should not be delayed by public use pro- 
ceedings unless for extraordinary^ and amply sufficient reasons. 
Campbell v. Brown, 56 0. G. 1565. 
When an allegation of public use comes up for considera- 
tion in connection with an application which is being consid- 
ered ex parte after the termination of the interference pro- 



Rule 126 STATUTOEY BAR SUGGESTED. 556 

ceedings, the proper practice is for the Examiners to pass 
upon the question whether or not a prima facie case of public 
use has been established, rejecting the claims in the case if 
he decided the question in the affirmative. Unsworn state- 
ments do not make a prima facie case. 

Beatty, 56 0. G. 1563. 
Bar of public use not avoided by caveat. 

Meucci, 51 0. G. 399. 
Public use proceeding on motion of defeated party to an 
interference refused. 

Beardslee v. Moeslein, 46 0. G. 1640. 
The question as to what is the correct practice under this 
rule when joint applicants prove not to be joint inventors 
has presented itself in a variety of phases to the Commis- 
sioners, and their conclusions are by no means in harmony. 
During the period covered by these decisions the rule has 
been changed and modified, but this fact will not explain the 
conflict in them. Decisions reviewed. 

Hicks V. Keating v. Purvis & Bilgram, 40 0. G. 343. 
The question of statutory bar as contemplated in Eule 120 
relates to matter that is purely a bar as contradistinguished 
from title, or whether applicants are joint inventors. Under 
the present rule a statutory bar to either one of the parties 
in interference may call into exercise the action authorized 
by it. Formerly, it was only a statutory bar to both. 

Hicks V. Keating v. Purvis & Bilgram, 40 0. G. 343. 
If the question presents itself in the preliminary statement, 
applicant should be given a chance to avoid the objection by 
amendment; if he does not do so the preliminary statement 
should be approved if correct in other particulars, and in his 
decision of the question of priority the Examiner of Inter- 
ferences should call the attention of the Comrg.issioner to 
the existence of the statutory bar. 

Hicks V. Keating v. Purvis & Bilgram, 40 0. G. 343. 
The joint patentees proving not to be joint inventors the 
interference was decided against them and the case was re- 
manded to the Primary Examiner to consider whether there 
was not a statutory bar existing to the grant of the patent 
by reason of the right of one of said joint patentees to obtain 
a patent. 

Harrison v. Hogan, 18 0. G. 931. 
The provisions of this riile must not be construed to pro- 
vide an alternate remedy, but can only be availed of when 
motions relating to a statutory bar can not be made as pre- 
scribed in the other rules. 

Barney v. Kellogg, 17 0. G. 1096. 



557 STATUTOKY BAR SUGGESTED. Rule 126 

When the Examiner of Interferences finds that neither 
party is the first and original inventor he should render his 
judgment accordingly. As this question relates to priority 
it should be appealed to the Board and not referred to the 
Commissioner under this rule. 

Wood V. Eames, 17 0. G. 512. 

The law of 1836 provided that in connection with inter- 
ference proceedings, like proceedings should be had to deter- 
mine which, or whether either of the applicants is entitled to 
receive a patent as prayed for. But in the act of 1870 this 
provision was omitted. 

Smith V. Perry, 9 0. G. 688. 

ISTor can I think that an interference proceeding author- 
ized by law for one specific purpose (i. e., to determine pri- 
ority of invention), can be rightfully used by the Commis- 
sioner for any other purpose, and in my judgment, no part 
of the testimony taken and submitted in such case, if plainly 
outside the issue, is evidence at all against the right of the 
adverse party. This decision related to abandonment by 
public use apparently. 

Smith V. Perry, 9 0. G. 688. 

In the case of Eouse and Stoddard, 75 C. D. 33, the prac- 
tice of sending letters of inquiry to the inventor who has 
filed and abandoned an application, calling for information 
in the form of affidavits as to public use of the invention, 
and informing the applicant that another application for 
the same invention is pending, was inaugurated; this prac- 
tice was discontinued in the case of 

Casilear & Mclntire, 1875 C. D. 117. 

I believe it has been the custom of the Commissioners, 
although such matters are purely ex parte, to hear other par-' 
ties, in order that he might be as fully informed as possible 
in relation to the merits of the case. 

Com. Spear in Carter & Dwyer v. Perry & Dickey, 1875 
C. D. 111. 

The question of novelty is always a proper one for con- 
sideration of the Oflfice at any time prior to the grant of a 
patent An interference case reopened to admit testimony 
of that kind after the time for taking testimony had ex- 
pired. The Examiner of Interferences directed to assign 
dates for taking such testimony. 

Wood V. Morris, 1873 C. D. 39. See Hovey v. Hufeland. 

If public use for more than two years is shown by pre- 
liminary statement the interference should be dissolved. 
Schenck v. Eider, 1870 C. D. 135. 



Eule 127 SECOND interference. 558 

The question of priority decided by the Commissioner and 
the case referred to the Primary Examiner to determine the 
question of novelty in view of newly discovered references. 
Yost V. Heston, 1871 C. D. 236. 
Cases that pass on the subject matter of this rule. 

Foster v. Bell, 159 0. G. 241; Hess v. Jorrissen v. Fil- 
bel, 131 0. G. 1419 ; Dixon and Marsh v. Graves and 
Whittemore, 130 0. G. 2374; Potter v. Mcintosh, 127 
0. G. 1995. 

Rule 127. Second Interference. 

A second interference will not be declared npon a 
new application for the same invention filed by either 
party. 

CONSTRUCTIONS. 

This rule prohibits the declaration of a second interference 
between the same contesting parties upon the same inven- 
tion and a second interference between the same applications 
should be declared only in rare cases and under very excep- 
tional circumstances. Eeason of the rule. See also note to 
122. 

Blackford v. Wilder, 124 0. G. 319. 

Held, that the testimony in a prior interference may be 
given the force and effect of an ex parte affidavit in the con- 
sideration of the question whether a second interference with 
a broader issue is justified. 

Wende v. Horine, 118 0. G. 1070. 

The decision in the first case is prima facie evidence that 
applicant was not the first inventor even when decision was 
rendered upon a default. 
Votey, 114 0. G. 259. 

Or because a party has enlarged the scope of his claims. 
Corry and Barker v. Trout v. McDermott, 110 0. G. 306. 

From the earliest organization of the office, it has been the 
settled practice to declare such second interferences, and 
therein when proper, to reverse the decision in the former 
one, and numerous patents have been granted to the suc- 
cessful parties upon such second interferences, notwithstand- 
ing patents have been granted to their adversaries upon the 
previous trials. 

Abraham v. Fletcher, 1869 C. D. 50. 



559 susPENSioisr of interference. Rule 128 

Rule 128. Sus'pension of Interference for Considera- 
tion of New References. 

If, during the pendency of an interference, a ref- 
erence be found, the primary examiner shall call the 
attention of the law examiner thereto, and the latter 
may request the suspension of the interference until 
the final determination of the pertinency and effect 
of the reference, and the interference shall then be 
dissolved or continued as the result of such determi- 
nation. The consideration of such reference shall be 
inter partes and before the law examiner. 

HISTORY. 

Previous to the recent revision, this rule read as follows : 
If, during the pendency of an interference a reference be 
found, the interference may be suspended at the request of 
the primary examiner until the final determination of the 
pertinency and effect of the reference, and the interference 
shall then be dissolved or continued as the result of such 
determination. The consideration of such reference shall be 
inter partes. 

This provision is in the rules of 1893, but "ex parte" is 
replaced by "inter partes" in the Rules of June 18, 1897. 

CONSTRUCTIONS. 

Consideration of references should be ex parte. 
Westinghouse v. Thomson, 1891 C. D. 110. 

This rule can have no application before the opening of 
the preliminary statements, because the proceeding provided 
for must be inter partes, and there can be no proper inter 
partes' consideration of the question of dissolution prior to 
access to opponents' cases. The interference is not pending 
within the meaning of this rule previous to that time. 
Behrend v. Lamme v. Tingley, 124 0. G. 2536. 

If the Examiner has secured jurisdiction as to certain 
counts an applicant can not demand that he consider other 
counts - 

Lugoldshy v. Bellows, 116 0. G. 2532. 

On appeal from the decision of the Primary Examiner 
shifting the burden of proof on the Examiner requesting a 
return of the case for consideration of new references. Be- 



Rule 128 SUSPENSION of inteeference. 569 

fore the interference proceeds further it should be positively 
determined whether or not these new references anticipate 
the issue. 

Wright & Stebbins v. Hansen, 114 0. G. 761. 
Because the Primary Examiner has requested jurisdiction 
under this rule in one interference, it is no ground for grant- 
ing a motion to transmit the files in another case in which 
the same application is involved as the subject matter is pre- 
sumably different and therefore the reference not applicable 
in both cases. 

Parkin & Parkin v. Eiotte, 109 0. G. 1335. 
The Examiner erred in practice in his action rejecting the 
claims and then setting a day for a hearing on this rejection. 
When the interference was transmitted he should have set a 
day for hearing upon the question of patentability. After the 
hearing if he was of the opinion that the claims were not 
patentable in view of the references he should have rendered 
a decision dissolving the interference on that ground. After 
the interference was dissolved each of the applications should 
have been considered ex parte. 
Struble, 109 0. G. 1335. 
• Judgment of priority not suspended to await determination 
of ex parte questions relating to the application of the suc- 
cessful party not affecting in any manner the rights of the 
defeated party. 

Smith V. Dimond, 20 0. G. 742, 1881 C. D. 34. 
The interference will be suspended a sufficient time to 
permit the usual appeals from the primary examiner. 
Stone V. Greaves, 17 0. G. 260, 1880 C. D. 23. 
If at any time pending an interference, new references are 
discovered by the primary examiner, the interference may 
be suspended for examination. 

Banks v. Snediker, 16 0. G. 1096, 1879 C. D. 304; 
Anson v. Woodbury, 11 0. G. 243, 1877 C. D. 4. 
A party may have a reasonable time to appeal. 

Abel & Dewar v. Maxim v. Nobel, 1891 C. D. 102. 
Cases that pass on the subject matter of this rule : 

Turner v. Macloskie, 128 0. G. 2835; Mill v. Midgley, 
136 0. G. 1534; Cazin v. VonWelsbach, 119 0. G. 
650; Durafort, 110 0. G. 2017; Parkin & Parkin v. 
Eiotte, 109 0. G. 1336; Hicks v. Costello, 103 0. G. 
1163; Macey v. Laning v. Gasler, 101 0. G. 1608, 
. 1902 C. D. "399. 



561 NEW PAETiEs. Rule 129 

Rule 129. For Addition of New Parties. 

If, during the pendency of an interference, another 
case appear, claiming substantially the subject matter 
in issue, the primary examiner shall request the sus- 
pension of the interference for the purpose of adding 
said case. Such suspension will be granted as a mat- 
ter of course by the examiner of interferences if no 
testimony has been taken. If, however, any testimony 
has been taken, a notice for the proposed new party, 
disclosing the issue in interference and the names and 
addresses of the interferants and of their attorneys, 
and notices for the interferants disclosing the name 
and address of the said party and his attorney, shall 
be prepared by the primary examiner and forwarded 
to the examiner of interferences, who shall mail said 
notices and set a time of hearing on the question of 
the admission of the new party. If the examiner of 
interferences be of the opinion that the interference 
should be suspended and the new party added, he 
shall prescribe the terms for such suspension. The 
decision of the examiner of interferences as to the 
addition of a party shall be final. 

CONSTRUCTIONS. 

The Primary Examiner requested that the interference be 
returned to him for dissolution. 

Welch V. Aufiero, 319 0. G. 930. 
If two parties are in interference upon certain issues and 
one inserts a claim of a patent, the proper course is for the 
Primary Examiner to request jurisdiction and suggest the 
patented claim to both parties and declare an interference 
between the three on that issue. 

Dow V. Benson, 107 0. C. 1378. 

As stated in Maxwell v. Byron v. Henry, 98 0. G. 1968, 

an interference should not continue between two parties as 

to certain counts and between three parties as to other counts. 

Dow V. Benson, 170 0. G. 1378. 

One of the applicants filed a second application. The Com- 



Rule 130 FiisrAL hearing. 562 

missioner says, if the claims are patentable over the issue 
and can be made by the other parties to the interference the 
Examiner should ask to have the applications of the other 
parties restored to his jurisdiction for the purpose of sug- 
gesting claims of the petitioners' application. If, on the 
other hand, the claims in this application are not patentable 
over the issue of the old application they should be rejected 
thereon. 

Eobinson, 106 0. G. 1242. 

After decision on priority by the Examiner, Examiners- 
in-Chief and Commissioner it is too late to dissolve merely 
for the purpose of adding a new party. 

Such a motion should be denied rather than dismissed for 
irregularities. 

Corry v. Barker v. Trout, 99 0. G. 2547, 1902 C. D. 195. 

The junior party has taken testimony, and the time al- 
lowed the senior party has expired without the taking of 
testimony by him. The effect of adding a new party at this 
stage would be practically to reinstate the latter, and as there 
is ample opportunity for a second interference between the 
junior and the third party the present interference will not 
be suspended for the purpose indicated. 
Wein V. Northrop, 58 0. G. 1416. 

An interference dissolved in order to include a former 
application by one of the parties. 

White V. Demarest, 41 0. G. 1161, 1887 C. D. 133. 

A motion to dissolve an interference made in violation of 
this rule should be determined by the examiner of interfer- 
ences. 

Edison v. Gilliland v. Phelps, 38 0. G. 539, 1887 C. 
D. 11. 

An interference may be suspended but not dissolved for the 
mere purpose of adding new parties before taking testimony. 
Maloney v. Kidwell, 16 0. G. 1139, 1879 C. D. 311. 

It is unnecessary to dissolve the interference in order to 
include a second interfering patent, but the matter may be 
corrected by the examiner of interferences in his notice to the 
parties upon giving the time for taking testimony. 

Wilson & Matthews v. Yakel & Eogers, 10 0. G. 944, 1876 
C. D. 245. 

Rule 130. Nonpatentability at Final Hearing. 

Where the patentability of a claim to an opponent 
is material to the right of a party to a patent, said 



563 FINAL HEAEING. Rule 130 

party may urge the nonpatentability of the claim to 
his opponent as a basis for the decision upon priority 
of invention. A party shall not be entitled to raise 
this question, however, unless he has duly presented 
and prosecuted a motion under Rule 122 for dissolu- 
tion upon this ground or shows good reason why such 
a motion was not presented and prosecuted. When 
the law examiner has denied such a motion for dis- 
solution the question shall not be reinvestigated by 
the examiner of interferences except in view of evi- 
dence which was not before the law examiner, but it 
may be raised before the appellate tribunals on ap- 
peal from award of priority by the examiner of inter- 
ferences. 

HISTORY. 

See Podlesak and Podlesak v. Mclnnerney, 1906 C. D. 
558, 120 0. G. 2127, and cases referring to it, especially 
United States of America ex rel. The JSTewcomb Motor Com- 
pany V. Moore, Commissioner of Patents, 133 0. G. 1680. 

CONSTRUCTIONS. 

(1) What May he Considered on Final Hearing. 

Patentability of the issue, and difference in meaning, may 
not be argued under this rule, and especially no testimony 
will be taken. 

Molyneux v. Onderdonk, 191 0. G. 292. 

E. 130, however, only gives a party the right to argue at 
final hearing the unpatentability of a claim to an opponent, 
and then only when it is material to such party's right to a 
patent. 

Molyneux v. Onderdonk, 196 0. G. 292. 

A motion to dissolve because the issue means different 
things when applied to the different applications is no ground 
for consideration as to whether the issue is patentable to 
the opponent. 

Havemeyor v. Couqel, 186 0. G. 558. 

A person is not entitled to argue that his opponent has no 
right to make the claim unless he has urged this in a motion 
to dissolve. 

Weis V. Mack, 185 0. G. 830. 



Rule 130 FINAL HEAEING. 564 

Neither an allegation by a party to an interference that he 
himself has no right to make the claims, nor an allegation 
that the counts have different meanings in the two cases, 
forms a basis for a decision on priority and can not be 
urged at final hearing. 

Weis V. Mack, 185 0. G. 830. 

I am of the opinion that the adoption suggested claims 
and the prosecution of an interference can not be construed 
as an election of the species involved in the absence of other 
acts or statements on the part of the applicant binding him 
to such species. 

Burk, 184 0. G. 289. 

"The method of treating molten blast furnace slag, con- 
sisting in flowing the same over an artificially cooled mov- 
ing surface while passing from a fluid to a solid state." Ee- 
ferring to feeding the slag into a hollow cooled rotating 
cylinder, ma}^ not be made on an apparatus which feeds the 
slag between the fitting surfaces of cooled rolls. The results 
beins: different. 

Wood V. Duncan, 183 0. G. 1033. 

It is well settled that the patentability of the issue will be 
considered on final hearing only under the supervisory au- 
thority of the Commissioner and in a clear case. 
DeFerranti v. Lindmark, 183 0. G. 783 (Cases). 

The question of inoperativeness may be presented upon 
proper showing at the final hearing of the case, and if cir- 
cumstances justify it, testimony may be taken in accord with 
the cases cited. 

Keys and Kraus v. Yunck, 183 0. Gr. 248-9. 

The refusal to include certain trade-marks in the inter- 
ference does not preclude them from being introduced at 
the final hearing. 

Blanke Tea & Coffee Co. v. Herst, 182 0. G. 247. 

Claims added under Eule 109 may be objected to a final 
hearing- if the question has been previously raised. 

Joslevn V. Hulse, 132 0. G. 844; Hopkins v. Cleal, 180 0. 
G. 1393. 

The question as to whether the renewal was properly filed 
raised under this rule. 

Le Brow v. Wix, 177 0. G. 771. 

Where it appears that one of the parties has no right to 
make the claims in interference, the Examiners-in-Chief prop- 
erly awarded priority to the party, and did not recommend 
that the interference be dissolved. 

McBerty v. Shore, 175 0. G. 843. 



565 pinaij heaeing. Rule 130 

Question of new matter may be heard under this rule. 
Samulesen v. Flanders, 171 0. G. 745. ■ 

In view of their conclusion that Schutte was the prior in- 
ventor the Board should have considered and determined the 
question of the right of Schutte to make the claim as ancil- 
lary to the question of priority of invention, notwithstanding 
that they had previously considered that question on motion 
and the Commissioner had refused to exercise his supervisory 
authority. 

Schutte V. Eice, 157 0. G. 753. 

Petitioner has an adequate remedy in the interference pro- 
ceeding, where the question (right to make the claim) can be 
raised at final hearing under Eule 130. 
Frost V. Chase, 151 0. G. 741. 

Questions of public use not considered at final hearing, 
Lacroix v. Tyberg, 148 0. G. 831. 

That counts one, two and three have different meanings in 
the respective applications, and that there is consequently no 
interference in fact, that counts four and five are not read- 
able on his own device, and that counts four, five and six are 
not patentable over the prior art, and that for these reasons 
the interference should be dissolved, do not relate to mat- 
ter that can properly be considered at final hearing except un- 
der circumstances such as would warrant the exercise of the 
supervisory authority of the Commissioner. 
Lacroix v. Tyberg, 148 0. G. 831. 

Question not raised below will not be considered on appeal. 
McFarland v. Watson and Watson, 146 0. G. 257. 

An affidavit of counsel for the petitioner to the effect that 
efforts were made to obtain an amended preliminary state- 
ment should have been presented before the Examiner of 
Interference, and it is not entitled to consideration when 
presented on appeal in the first instance. 

Williams v. Foyer and Kurz, 142 0. G. 1114. 

In Podlesak v. Mclnnerney, 26 App. D. C. 405, the rule 
previously adhered to in this court was modified, and we 
held that in awarding priority of invention the right of a 
party to make a claim might be considered as an ancillary 
question. But the concurrent decisions of the lower tribunal 
on the question will not be disturbed except in a clear case, 
especially where the subject-matter is a complicated con- 
struction in reference to which we are more liable to ekr 
than the Experts of the Patent Office. 

Lindmark v. Hodgkinson, 137 0.. G. 228. 

S. did not bring a motion to dissolve the interference on 



Rule 130 FINAL HEAEING. 566 

the ground that the other parties had no right to make the 
claims, and as no showing was made why such motion was 
not brought, he is not entitled to urge this question under 
the provision of Eule 130. The fact that no such motion 
was made does not prevent the tribunals of the Office from 
considering the question of their own motion, when it clearly 
appears that one or more of the parties have no right to 
make the claims. 

Smith V. Foley v. Anderson v. Smith, 136 0. G. 847. 
It was incumbent upon appellant to raise this question 
(sufficiency of disclosure) before the Primary Examiner 
whose skill in the particular art peculiarly qualified him to 
consider it. 

Cutler V. Leonard, 136 0. G. 438; McFarland v. Wat- 
son et al., 146 0. G. 257. 
Inasmuch as the pertinency of the question can not be 
judged as well when taken by themselves as when considered 
in connection with the answers thereto, any serious doubts as 
to the propriety or materiality of the interrogatories should 
be resolved in favor of allowing them to remain subject to 
objection until the final hearing. 

Actiengesellschaft & Aulanerbrau Salvator Braueri v. Con- 
rad Seipp Brewing Co., 135 0. G. 1121. 
If the cross-interrogatories were not suppressed until final 
hearing, it is clear that appellant might thereby improperly 
obtain information to the irreparable injury of the adverse 
party. 

Actiengesellzchaft & Aulanerbrau Salvator Brauerei v. 
Conrad Seipp Brewing Co., 135 0. G. 1121. 
A motion to suppress testimony decided at final hearing 
may not be appealed separately, but may be considered by 
the appellate tribunal on appeal upon the main question. 
Dyson v. Sand v. Dunbar v. Browne, 133 0. G. 1679. 
The fact that on appeal from a decision on a motion to 
dissolve the Examiners-in-Chief have held that a party has 
a right to make the claims does not prevent the question 
being raised before the Examiner of Interferences at final 
hearing under Eule 130. 

O'Brien v. Gale v. Limmer v. Calderwood, 133 0. G. 
514. 
It is evident that what Eule 130 requires is that the ques- 
tion of the patentability of the claims to the other party 
shall have been duly presented and prosecuted before the 
Primarv Examiner, and it is therefore immaterial whether 



567 FINAL HEAEING. Rule 130 

this was done on a motion to dissolve or on a motion to 
amend 

Josleyn v. Hulse, 132 0. G. 844. 
Where testimony must be considered in determining a 
motion to amend, a preliminary statement, it is within the 
discretion of the Examiner to consider such testimony for 
the purpose of deciding the motion prior to final hearing. 
When in his opinion the conditions of the case justify an 
early adjudication of the questions raised, his decision should 
not be delayed. 

Smith V. Ingram, 131 0. G. 2420. 
Eule in accordance with the holding of the Court of Ap- 
peals in the decision in Podlesak and Podlesak v. Mclnner- 
ney (120 0. G. 2127), and in Kilbourn v. Hirner and in 
Wickers and Furlong (129 0. G. 869). 
Hopkins v. Newman, 131 0. G. 1161. 
The question of the patentability of the issue will not be 
considered on an appeal on priority except under such special 
circumstances as would warrant the exercise of the super- 
visory authority of the Commissioner. 

Hess V. Jorrissen v. Felbel, 131 0. G. 1419. 
Rule 130 does not confer upon a party the absolute right 
to contest his opponent's' right to a claim, but allows him to 
do so only when the objection urged against his opponents 
to make the claim do not apply with equal force to his own 
case. 

Pym V. Hadaway, 131 0. G. 692; Anderson & Dyer v. 
Lowry, 89 0. G. 1861; Bechman v. Southgate, 127 0. 
G. 1254; Bechman v. Wood, 89 0. G. 480; Briggs v. 
Conley, 104 0. G. 1119; Cory v. Gibhart & Martin, 
Jr., V. Blakey, 115 0. G. 1328; Denton v. Parker, 98 
0. G. 415; Goss v. Scott, 96 0. G. 844; Gaily v. Bur- 
ton, 120 0. G. 325 ; Home v. Somers & Co., 129 0. G. 
1609; Jenner v. "Dickson v. Thibodeau, 116 0. G. 
1181; Kilbourn v. Hirner, 128 0. G. 1689; Kempshall 
V. Sieberling, 110 0. G. 1427; Locke v. Crebbin, 124 
0. G. 317; McGill v. Adams, 119 0. G. 1259; Miel v. 
Yough, 121 0. G. 1350; Read v. Scott, 101 0. G. 
449; Ruische v. Sandherr, 105 0. G. 1780; Seeberger 
V Dodge, 113 0. G. 1415; Shallenberger v. Andrews, 
1902 C. D. 246; Sobev v. Holsclaw, 119 0. G. 1922; 
Talbot V. Morrell, 99 0. G. 2955; Weintraub v. 
Hewitt, 124 0. G. 2534; Hopkin v. Cleal, 180 0. G. 
1393. 



Rule 130 FINAL HEARING. 568 

The Examiner of Interferences has jurisdiction to decide 
at final hearing the question raised upon this motion, namely, 
whether "mixed paints" and "ready mixed paints" are goods 
of different descriptive properties, for the trade-mark statute 
provides for the determination of the question of the "right 
of registration to such trade-mark." The trade-mark statute 
gives much larger jurisdiction than the patent statute, which 
merely provides for the determination of the question of 
priority. 

Lewis & Bros. Co. v. Phoenix Paint & Varnish Co., 131 
0. G. 361. 
The sole contention on this appeal is that the issue is not 
patentable to either party. The question has been before the 
Primary Examiner both ex parte and inter partes, and in 
each case he has held the issue to be patentable. Both the 
Examiner of Interferences and the Examiner in Chief upon 
appeal on priority have refused to recommend under Rule 
126 that the claims be rejected as being without patentable 
novelty. Under these circumstances the question presented 
will be considered only under my supervisory authority for 
the purpose of correcting a manifest error. 

Dixon & Marsh v. Graves & Whittemore, 130 0. G. 2374. 
See note to Eule 122. 

McKulken v. Bollee, 130 0. G. 1691. 
Evidence considered (by Court of Appeals) and held to 
show that the application on which the patent was granted 
did not, as originally filed, disclose the invention in issue, 
and priority therefore awarded to the junior party. 

McKnight v. Pohle, 130 0. G. 2069. 
Evidence considered (by Court of Appeals) and held to 
show that the application on which the patent was granted 
did not, as originally filed, disclose the invention in issue, 
and priority therefore awarded to the junior party. 

McKnight v. Pohle, 130 0. G. 2069. 
A motion to suppress testimony calling for an examina- 
tion of a large part of the record will be postponed to the 
final hearing. 

Dyson v. Sand v. Dunbar v. Browne, 130 0. G. 1690. 
We greatly doubt whether the affidavits in this record pre- 
sented for the consideration of this court and controverting 
the sufficiency of disclosure found in the Weinwurm appli- 
cation in interference, could be profitably considered by this 
court. The question should come before us upon testimony 
taken in the interference proceeding. C. A. D. C. 

Wickers and Furlong, 129 0. G. 2074. 



569 FINAL HEARING, ' Rule 130 

N^ot every case comes within the provision of Eule 130, and 
until it is shown that it does, a party has no right to argue 
the question of the non-patentability of his opponent's claims 
before the Examiner of Interferences. 
Pym V. Hadaway, 129 0. G.. 2073. 

Eule 130 was intended to cover those cases where it was 
contended that one party had a right to make the claims, but 
the other did not, and that therefore the latter was not en- 
titled to the date of filing of his application as a date of 
conception and constructive reduction to practice of the in- 
vention in issue. The reasons given must not be applicable 
to both cases. 

Pym V. Hadaway, 129 0. G. 2073. 

Trade-marks. 

Harne v. Somers & Co., 129 0. G. 1609. 

After record judgment of priority in favor of 0. and upon 
motion by B. the interference was reopened in order to per- 
mit him to urge under Eule 130 that 0. had no right to 
■make the claims of the issue. 

Becon v. Otis, 129 0. G. 1267. 

In Podlesak v. Mclnnerne}^, 26 App. D. C. 399, this Court 
has held that the question of the right to make a claim may 
sometimes- be an ancillary question to be considered in award- 
ing priority of invention. 

Wickers v. Furlong v. McKee, 129 0. G. 869. 

In cases 122 0. G. 2687 and 2688, it was decided that 
where a party makes a reasonable showing before the Ex- 
aminer of Interference* of the inoperativeness of his oppo- 
nent's device, and that showing does not extend to his own 
structure, he may be permitted to take testimony provided 
that the proposed testimony is of a character to Justify such 
action. No reason appears for making any distinction be- 
tween a case where a party alleges that his opponent's device 
is inoperative and one where it is contended that the op- 
ponent has no right to make the claim in issue. Such testi- 
mony should be permitted only under Eule 130. 
Pym. V. Hadaway, 129 O! G. 480. 

It is believed that testimony consisting wholly of the 
opinion of expert patent lawyers as to the legal effect of 
claims should not be received. 

Pym V. Hadaway, 129 0. G. 480. 

W.'s preliminary statement failed to overcome the record 
date of H. and W. In response to our order to show cause 
why judgment should not be rendered against him W. moved 



Rule 130 ' FINAL HEAEING. 570 

to dissolve the interference on the ground that H. and E. 
had no right to final hearing on priority under Eule 130. 

This proceeding should be a part of the main case and not 
a separate proceeding. All relates to priority. 

Hewitt V. Weintraub v. Hewitt & Eogers, 128 0. G. 1689. 

An award of priority is also proper under Eule 130 of the 
Eules of Practice of the Office, where it is shown at the 
final hearing of an interference that the application of a 
party relied upon as evidence of invention at the date thereof 
does not warrant the claim in issue. 
Martin v. Mullin, 137 0. G. 3316. 

Interferences are for the purpose of determining the ques- 
tion of priority only. That the issue is not patentable to 
either party has no bearing. 

In cases contemplated by Eule 130, however, a decision 

that the issue is not patentable to one party would necessarily 

result in a decision of priority in favor of the other party. 

Dixon & Marsh v. Graves & Whitemore, 137 0. G. 1993. 

Where the operativeness of an opponent's device or his 
right to make the claim is material to the right of a party 
to a patent, said party may urge the matter at final hearing 
before the Examiner of Interferences as a basis for his award 
of priority; but as a condition precedent to such right, the 
party must first present the matter upon a motion for dis- 
solution or show good reason why such motion was not made 
and prosecuted. 

Barber v. Wood, 137 0. G. 1991. 

After the present motion to dissolve is disposed of peti- 
tioner may pursue his motion for an order permitting him 
to take testimony under the practice announced in Browne 
V. Stroud, 133 0. G. 3687, and Lowry & Crowley v. Spoon, 
133 0. G. 3687. 

Barber v. Wood, 137 0. G. 1991; operativeness and pub- 
lic use. 

The Court of Appeals in the District of Columbia, in the 
case of Podlesak v. Mclnnerney (130 0. G. 3137), held that 
the question of the right of a party to make a claim may be 
an ancillary question to be considered in awarding priority 
of invention. In my decision in the case of Pohle v. Mc- 
Knight (119 0. G. 3519), and of Kilbourn v. Hirner (133 
0. G. 739), certain reasons are set forth why the question 
of the right to make the claims may be considered as a 
basis for an award of priority rather than a dissolution of 
the interference. Under the practice indicated above it was 
held that one of the parties had no right to make the claim 



571 FINAL HEARING. Eule 130 

of the issue because its subject matter was not shown in the 
original application. 

Emmet v. Fullagar, 124 0. G. 2179; citing G-allager v. 
Hien, 115 0. G. 1330; Laas & Sponenburg v. Scott, 
122 0. G. 352; Podlesak t. Mclnnerney, 120 0. G. 
2127; Pohle v. McKnight, 119 0. G. 2519; Kilbourn 
V. Hirner, 122 0. G. 729; Eobinson v. Seelinger, 116 
0. G. 1735. 
We greatly doubt whether the affidavits in this record 
presented for the consideration of this Court and controvert- 
ing the sufficiency of disclosure found in the W. application 
in interference could be profitably considered by this Court. 
That question should come before us upon testimony taken 
in the interference proceeding. (A. D. C.) 

Wickers v. Furlong v. McKee, 124 0. G. 908. 
The right of McKee to make the claims questioned by 
Wickers and Furlong will be given consideration as ancillary 
to the question of priority. 

Wickers & Furlong v. McKee, 124 0. G. 908, citing 
Podlesak & Podlesak v. Mclnnerney, 120 0. G. 2127; 
Pohle V. McKnight, 119 0. G. 2519. 
The right of Crebbin to make the claims corresponding 
to the issue may be urged at the final hearing. 
Locke V. Crebbin, 124 0. G. 317. 
The consideration of the question of patentability or right 
to make the claims will not be considered at the final hear- 
ing, where the moving party is in no case entitled to receive 
a patent on the subject matter. 

Potter V. Mcintosh, 122 0. G. 1721. 
I am of the opinion that the question raised by this attack 
(sufficiency of disclosure) is one properly considered in de- 
termining the question of priority in those cases where a 
holding that a party is entitled to make the claim in issue 
results in a judgment against a party, who, if he be the true 
inventor, is entitled to a patent. 

Kilbourn v. Hirner, 122 0. G. 729. 
The question of the right to make a claim is reviewable, 
if at all, with the final decision in the interference and not 
upon interlocutory appeal. 

Zimmermann v. Lamboni, 121 0. G. 2326. 

No interlocutory appeal on decision affirming right to 

make claims, but an opponent's right to make claims "may" 

be questioned upon appeal from decisions upon priority of 

invention where a holding of right on the part of one party 



Rule 130 FINAL HEAEING. 572 

to make the claims operates to deny a patent to another 
party who if such holding be in error is the first inventor; 
Miel V. Young, 121 0. G. 1350. See also Noble v. Ses- 
sions, 1310 0. G. 1348. 
The question of the right of a party to make a claim goes 
to the very foundation of an interference, for if the party 
has not such right the interference falls. If it be incorrectly 
held that such a party has a right to make the claim priority 
may be awarded to him and his adversary be deprived of a 
substantial right in that he is not given a claim where he 
necessarily is the prior inventor, his adversary never having 
made the invention. Manifestly that question should not be 
finally determined by the Primary Examiner who originally 
declared the interference. 

Podlesak v. Podlesak v. . Mclnnerney, 120 0. G. 2127. 
Where the question is appealed to the Commissioner on 
the question of priority, a motion to transmit the interfer- 
ference to the Primary Examiner to consider the question of 
patentability will not be granted unless a clear and unmis- 
takable error appears in the prior decision. 
Parker v. Lewis, 120 0. G. 323. 
A decision of the Examiner of Interferences refusing to 
expunge testimony will only be reviewed at the final hearing, 
Eovce V. Kempshall, 119 0. G. 338; Greene, Tweed & 
Co. V. Manufacturers' Belt Hook Co., 132 0. G. 680. 
Where the defeated party alleges public use, held, that 
the matter will not be considered until the decision on pri- 
ority becomes final. 

' Doble V. Henry, 118 0. G. 2249. 
Questions of patentability raised for the first time on ap- 
peal to the Commissioner refused consideration and brief on 
question stricken from the files. 

Hedlund v. Curtis, 114 0. G. 544-5. 
It has been the uniform practice not to suppress the tes- 
timony before final hearing. 

Andrews v. TsTelson, 111 0. G. 1038. 
Motions requiring the whole case to be gone into will be 
considered only at the final hearing. 
Hall V. Alvord, 101 0. G. 1833. 
In certain cases it is better to postpone the consideration 
of questions relating to the suppression of testimony until 
fina] hearing. The present case is not one of these. The 
Examiner of Interferences' decision granting motion to strike 
out affirmed. 

Brill & Adams v. Uebelacker, 99 0. G. 2966. 



573 FINAL HEAEiNG. Rule 130 

To pass upon the question of whether or not the evidence 
should be suppressed would require such a consideration of 
the very voluminous record in this case as will necessarily 
be given at the final hearing, and for that reason a final 
disposition of the matter should be postponed until that time. 
Talbot V. Monell, 99 0. G. 2965. 
If a witness refuses to answer a material question and no 
application is made to the U. S. Court, testimony will not 
be stricken out except preparatory to final hearing. 

Independent Baking Powder Co. v. Fidelity Mfg. Co., 
94 0. G. 223. 
The pendency of a motion to dissolve before the Primary 
Examiner does not prevent the parties from bringing any 
other proper motion before the Examiner of Interferences. 
Mechlin v. Horn, Colclazer & Munger, 92 0. G. 2507-8. 
AYhere the question of priority has been decided without 
the suspension of an interference proceeding, the question 
of patentability of a claim involved in the interference will 
be considered not inter partes, but ex parte by the Primary 
Examiner. 

Pell V. Pierpoint, 76 0. G. 1573. 
Question of patentability refused consideration on final 
hearing- in view of the fact that no motion was made under 
Eule 122. 

Schnabel v. Shellaberger, 68 0. G. 658. 
Priority of invention can not be awarded to an applicant 
whose device is inoperative. 

Glidden v. Noble, 67 0. G. 676. 
Where an applicant copied the claims of a patent, all the 
tribunals must pass upon the question of the right of appli- 
cant to make the claim. 

Eeichenbach v. Goodwin, 63 0. G. 311. 
Where the Examiner of Interferences refused to consider 
a motion to strike out a wife's testimony and reserved the 
question until final hearing, held, on appeal to the Commis- 
sioner, that this was a proper subject for interlocutory action. 
Crawford v. Lichenstein, 61 0. G. 1480. 
In view of the obvious irregularities in declaring the in- 
terference, it is extremely difficult to render a decision on 
the question of priority. 

The Examiner is directed to carefully consider the ques- 
tion of patentability of the issue and take such action as 
the case demands. 

Mets V. Crane & Bloomfield, 58 0. G. 947. 
It is the clear duty of the Office in such a case to decline 



Eule 131 ASSIGNEES. 574 

to further consider the question of abandonment of Y's ap- 
plication until the question of priority of invention shall 
have been determined, when unquestionably a much fuller 
light will have been shed upon the whole matter. 

Young V. Case, 58 0. G. 945. 
Where on final hearing before the Commissioner an inter- 
ference is suspended and the case remanded to the Primary 
Examiner for consideration of the question of operativeness, 
this question will not be considered inter partes, but will be 
determined by the Examiner subject to the regular course 
of appeals in ex parte proceedings. 

Archer, 57 0. G. 696. 
Cases that pass on the subject matter of this rule : 

Kilbourn v. Hirner, 128 0. G. 1689; Bechman v. South- 
gate, 139 0. G. 1254. 

Rule 131. Prosecution or Defense by Assignee. 

When, on motion duly made and upon satisfactory 
proof, it shall be shown that, by reason of the ina- 
bility or refusal of the inventor to prosecute or defend 
an interference, or from other cause, the ends of jus- 
tice require that an assignee of an undivided interest 
in the invention be permitted to prosecute or defend 
the same, it may be so ordered. 

CONSTRUCTIONS. 

The American Steam Boiler Cleaner Co.'s assignment, 
not containing any request, was not noted on the file, and 
the Examiners in declining to interfere, probably overlooked 
the assignment, even though there was no request to issue 
the patent to it, it had the right to prosecute this applica- 
tion. (See ex parte Hill & Hill, 206 0. G. 1437.) 
Schreiber v. Bauer, 258 0. G. 813. 
Interference between the joint application of G. and L. 
and the sole application of G. The assignee of L. allowed 
to appoint an attorney. 

Gilbert v. Gilbert and Lindlev, 160 0. G. 775; Churchill 
V. Goodwin, 132 0. G. 1838. 
An exclusive licensee permitted to have full knowledge of 
proceedings so that it might intervene if any evidence of 
collusion appears. 

The National Eailway Materials Co., 129 0. G. 481. 



575 DEFEATED PARTIES. Eule 132 

A separate motion such as is provided for by Eule 131 is 

unnecessary where the assignee holds the entire interest. 

Hastings v. Gallagher, 93 0. Gr. 189; Sotterhad v. Corn- 
walCllS 0. G. 1344. 
The record shows L. has taken no action in the case and 
has not filed a preliminary statement, although the time for 
filing has expired. 

The circumstances are such as to warrant permitting the 
assignee of an undivided part interest to prosecute the in- 
terference. 

• Lottridge v. Eustice, 121 0. G. 689. 

The motion is proper where applicant has assigned one of 
two applications containing claims in common, one of which 
is involved in an interference. 
Adams, 119 0. G. 650. 
After an inventor has assigned his entire interest, he can 
not obtain copies of the files without giving a good reason. 
Duncan v. Duncan, 109 0. G. 806. 
iSTo appeal lies from the refusal of the Commissioner to 
expunge certain assignments from the records. 
Casey, 101 0. G. 2567. C. D. 1902-492. 
A merely equitable assignee refused recognition, McPhail, 
89 0. G. 521, however, copies of papers furnished so that 
proceedings might be watched and if necessary the equitable 
owner permitted to intervene. 

Eenier v. MacPhail, 89 0. G. 521., 1899 C. D. 196. 
The assignee of an entire interest may prosecute an inter- 
ference on behalf of the application of his principal who 
died while the interference proceedings were pending. 
Chase v. Eyder, 1892 C. D. 219. 

Rule 132. Claims of Defeated Parties after Inter- 
ference. 

Wlienever an award of priority has been rendered 
in an interference proceeding by any tribunal and the 
limit of appeal from such decision has expired, and 
whenever an interference has been terminated by 
reason of the written concession, signed by the appli- 
cant in person, of priority of invention in favor of 
his opponent or opponents, the primary examiner 
shall advise the defeated or unsuccessful party or 



Rule 132 DEFEATED PARTIES. 576 

parties to the interference that their claim or claims 
which were so involved in the issue stand finally re- 
jected. 

HISTORY. 

Eule introduced in 1888. Discussion of rule in 56 0. G. 
141. 

Eule 130 of 1899 reads : "Amendments to the specification 
will not be received during the pendency of an interference, 
except as provided in Eules 106, 107, and 109." 

CONSTRUCTIONS. 

May have a generic claim though defeated in an inter- 
ference. 

Kahn, 241 0. G. 623. 

The winning party is entitled to the full benefit of the 
judgment, but where he seeks to broaden his claims the 
testimony and the ground upon which the judgment is based 
must always be considered in determining to what limits the 
privilege of enlargement of the claims may be extended. 
Little V. Armstrong, 232 0. G. 935. 

The grant should not be refused of claims for common 
subject-matter to a party who loses an interference upon an 
interpretation of the issue too narrow to cover the common 
subject-matter when such party had in his application 
throughout the interference claims broad enough to cover the 
common disclosure and the prevailing party fails to make 
any such claim either during or after the interference and. 
takes a patent limited to the specific feature which was held 
to be disclosed by him alone. Decision of , the Board of 
Examiner in Chief, 232 0. G. 939. 

The Primary Examiner may and should consider whether 
the differences between the counts awarded U. and those 
awarded L. are patentable when the case is returned to him 
at the end of this priority contest and refuse to L. such 
counts as are not patentably different from those awarded U. 
Leewellyn v. Upson, 227 0. G. 367. 

After judgment a party may amend so as to avoid the 
issues. 

The Underwood Typewriter Co. v. The Stenotype Co. 
and cases cited. 191 0. G. 831. 

It is unfortunate perhaps that the Patent Office Practice 
permits amendments by the successful party to broaden the 
scope of his claims after a final decision in interference upon 



577 DEFEATED PAETIES. RuIg 132 

claims for the same invention of narrower scope. That 
question, however, is not before us. 

Horine v. Wende, 129 0. G. 2885. 

The rejection upon reference to an opponent in an inter- 
ference is for new ground. Such ground having been found 
to exist and the claims of the issue having been rejected 
thereon under Eule 132, the Eules (65-68) and the statute 
(4903) heretofore noted gives applicant the right to amend 
in an endeavor to avoid such references. Said rules, for the 
reason stated, are considered applicable to this application 
rather than Eule 142. 

Klepetko, 126 0. G. 388. 

Final rejections are given under Eule 132 and in cases 
where division is required without closing the case to amend- 
ments. 

Sanders v. Hawthorne v. Hoyt, 125 0. G. 1347. 

The rejection under Eule 132 is to be considered as a 
rejection in an ex parte case upon a new ground, an appli- 
cant is entitled to request a reconsideration and to point out 
why the rejection is not proper. 
Lyon, 124 0. G. 2905. 

Where a party to an interference did not appeal from the 
adverse decision of the Examiners-in-Chief upon priority, 
so that under Eule 132 of the Patent Office the claims which 
were involved in that interference stand finally rejected, such 
party has no standing before the Court in the interference 
as to these claims. 

Fowler v. Boyce, 121 0. G. 1014. 

Where the successful party to an interference inserts 
broader claims and his patent issues containing these claims, 
held, that the defeated party may contest the issue of pri- 
ority of invention as to the broad claims upon making a 
prima facie showing that he invented the broad issue prior 
to the date established by the successful party. 
Wende v. Horine, 118 0. G. 1070. 

Where testimony has been taken in an interference pro- 
ceeding, held, that new and patentable counts should not be 
suggested to the parties by the Examiner before judgment 
of priority of invention. 

Freeman v. Parks, 117 0. G. 276. 

The question whether the petitioner is entitled to the al- 
lowance of the new claims presented should be determined 
bv a considration of the principles announced in Corry & 
Barker v. Trout v. McDermoth, 110 0. G. 306. 
Greuter, 116 0. G. 596. 



Rule 132 DEFEATED PARTIES. 578 

Bar of prior invention by another established in an inter- 
ference proceeding. The bar was therefore a new reason for 
rejection discovered and cited against the claim. The peti- 
tioner was entitled to amend in an effort to avoid this new 
ground. {Ex parte Harvey, 102 0. G. 631.) 
Greuter, 116 0. G. 596. 
Where an interference is dissolved neither party has a 
right to be heard upon the consideration of claims subse- 
quently presented by the other party. 

Meigs, Hughes '& Stout v. Gerdon, 116 0. G. 184. 
The Examiner can not require an applicant to insert or 
abandon certain claims in less time than established by law 
in an ex parte proceeding. 
Hewlett, 108 0. G. 1052. 
It is only the claims as they stand that are finally re- 
jected, new and amended claims may be substituted. 
Harvey, 102 0. G. 621-23. 
A motion to extend time for taking appeal made on the 
last day of limit and set for hearing two days after refused 
by Examiner for want of jurisdiction. This was restored 
on motion. 

Jean & Goode v. Hitchcock, 100 0. G. 3011-12, 1902 
C D. 342. 
It would seem that the applicant would under the rules 
have the right of appeal from such a rejection — notwith- 

OTQ Ti r] 1 n o* p I r* 

Sehlipphaus, 100 0. G. 2776, 1902 C. D. 339. 
A claim can not be canceled from an application involved 
in an interference by the mere filing of an amendment to 

Eead v. Scott, 100 0. G. 449, 1902 C. D. 242. 
It would undoubtedly lead to confusion to have the ap- 
plications involved in an interference under the jurisdiction 
of the Examiner of Interferences subject to amendment and 
change before an independent tribunal of the Office. 

Annand v. Spalckhaver, 97 0. G. 2741, 1901 C. D. 234. 
This rule prohibits amendments canceling claims unac- 
companied by a disclaimer or abandonment of the invention 
covered by them. 

Curtis V. Marsh, 92 0. G. 1236, 1900 C. D. 127. 

This rule was established for the purpose of imposing the 

duty of making a formal final rejection in the case of the 

defeated party to an interference proceeding, and not for the 

purpose of prescribing the extent and measure of that duty. 

Booth, 56 0. G. 141, 1891 C. D. 107. 



579 APPEAL TO EXAMINEES. Rule 133 

No claim should be allowed the defeated party which could 
by any latitude of construction be held to embrace matter 
common to the structure of both parties to the interference. 
Booth, 56 0. G. 141, 1891 C. D. 107. 
Pending an interference between application pending and 
patent inadvertently issued an amendment which does not 
come within the terms of Eules 106, 107, 109 will not be 
received or considered. 

Bechman v. Johnson, 48 0. G. 673, 1889 C. D. 184. 
This is a mere matter of regulation and does not deny the 
fundamental right of the applicant to prosecute his applica- 
tion by any suitable action thereon within the life of said 
application. 

Eeynolds, 24 0. G. 993, 1883 C. D. 56. 
Amendments by B. and C. claiming the subject-matter 
claimed by D., but not relating to the issue in the pending 
interference are not within the prohibition of Eule 124. 
Smith, 17 0. G. 447, 1880 C. D. 77. 

APPEALS TO THE EXAMINERS IN CHIEF AND TO 

THE COMMISSIONER AND PETITIONS TO 

THE COMMISSIONER IN THE EX PARTE 

PROSECUTION OF APPLICATIONS. 

Rule 133. Appeal to Examiners in Chief. 

Every applicant for a patent, any of the claims of 
whose application have been twice rejected for the 
same reasons, upon grounds involving the merits of 
the invention, such as lack of invention, novelty, or 
utility, or on the ground of abandonment, public use 
or sale, inoperativeness of invention, aggregation of 
elements, incomplete combination of elements, or, 
when amended, for want of identity with the inven- 
tion originally disclosed, or because the amendment 
involves a departure from the invention originally 
presented; and every applicant who has been twice 
required to divide his application, and every appli- 
cant for the reissue of a patent whose claims have 
been twice rejected for any of the reasons above 
enumerated, or on the ground that the original patent 



Rule 133 APPEAX. TO examinees. 580 

is not inoperative or invalid, or if so inoperative or 
invalid that the errors which rendered it so did not 
arise from inadvertence, accident, or mistake, may, 
upon payment of a fee of $10, appeal from the deci- 
sion of the primary examiner to the examiners in 
chief. The appeal must set forth in writing the points 
of the decision upon which it is taken, and must be 
signed by the applicant or his duly authorized attor- 
ney or agent. 

CONSTRUCTIONS. 

(1) EuLE IN" General. 

(2) Lack of Invention. 

(3) Abandonment. 

(4) Inoperativeness. 

(5) Combination. 

(6) Aggregation. 

(7) Want of Identity. 

(8) Division. 

(9) Eeissue. 

(10) Appeal to Board and to Commissioner. 

(11) Second Appeal. 

(12) Interference. 

(13) Appeal to Board — Affidavits Under Eule 75 — Suf- 

ficiency of. 

(14) Criticism as to Wording and Description. 

(15) Clearness — Functional. 

(16) Laches. 

(17) Two Claims Different. 

(18) Eejection on Applicant's Previous Patent. 

(19) Eeferences. 

(20) Additional Cases. 
Eev. Stat., sec. 4909. 

(1) Ride in General. 
A refusal to grant a design patent on the specification 
presented appealable in the first instance of the Board. 
Goldsoll, 189 0. G. 523. 
An appeal is the proper remedy in case of a refusal to 
dissolve a trade-mark interference on the ground of non- 
interference in fact. 

George & Backer Co. v. The Laffray & Herrman Co., 
188 0. G. 1051. 



581 APPEAL, TO EXAMINEES. Rule 133 

Question as to whether applicant has shifted ground ap- 
pealable to Examiner-in-Chief. 
Fast, 172 0. G. 552. 
Applicant appealed to the Board who reversed the Pri- 
mary Examiner but suggested other references and recom- 
mended that the application be rejected thereon. The Ex- 
aminer rejected it on said references. Appeal to the Board. 
Motsinger, 143 0. G. 1110. 
B. has appealed, but in his assignment of errors does not 
challenge the decision of the Commissioner on the question 
of priority of invention, "and to this extent he is presumed 
to have acquiesced in the decision against him." (Bechman 
V. Wood. 15 App. D. C.) 

Bechman v. Southgole, 127 0. G. 1254. 
We have carefully scrutinized these several rules and we 
perceive nothing in them that can by any fg,ir and reason- 
able construction be held to be inconsistent with the provi- 
sions of the statute. 

U. S. ex rel. Steinmetz, 104 0. G. 853. 
Proper subject matter for design patent, question appeal- 
able to Examiners-in-Chief. 

Proudfit, 10 0. G. 585, 1876 C. D. 202, changing the 
practice; Pressprich, 11 0. G. 195, 1877 C. D. 18; 
Stetson, 36 0. G. 343, 1884 C. D. 20; Schulze-Berge, 
43 0. G. 293, 1888 C. D. 4; Groves, 89 0. G. 1671; 
Sherman & Harmes, 89 0. G. 2067; Hale, 92 0. G. 
1437. 
Eule does not enumerate mutually exclusive points of ap- 
peal in such sense that one must be wholly different from 
another. The subject matter of each appeal is the rejection 
of a claim and not the reasons upon which it was rejected. 
Briggs, 75 0. G. 1854, 1896 C. D. 17. 
Question of whether desi.gn has patentable merit is not 
subject matter for an interlocutory appeal. 
Walter, 62 0. G. 1205, 1893 C. D. 26. 
Questions involving the rejection of a claim are not re- 
viewable on petition. 

Tobie, 50 0. G. 992, 1890 C. D. 28; Kulm, 58 0. G. 
1256, 1892 C. D. 46. 
Erom the judicial acts of the Examiner an appeal lies to 
the Board, from his executive acts the appeal is to the Com- 
missioner. 

Krake, 1869 C. D. 100; Morton, 1871 C. D. 169. 



Rule 133 APPEAL TO EXAMINERS. 582 

(2) Lack of Invention. 

Where claims are rejected the appeal is to the Examiners- 
in-Chief. 

Davis, 109 0. G. 1068. 
The question of completeness of conception to constitute 
invention relates to the merits and is appealable to the Board. 
Auerbach & Gubing v. Wiswell, 108 0. G. 389-90.' 
Pertinency of reference. 
Kerr, 28 0. G. 95. 
Novelty and utility. 

Buchanan, 1879 C. D. 288. 
As to whether application contains patentable subject 
matter. 

Underwood, 1872 C. D. 120. 

(3) Abandonment. 

The abandonment referred to is of the invention. Ques- 
tions as to abandonment of the application are reviewable on 
petition. 

Mygatt, 184 0. G. 801. 
Question of abandonment of invention appealable to Board. 

Springer, 120 0. G. 2754. 
Whether a reissue omitting the claims in interference is 
an abandonment of the invention disclosed therein is a ques- 
tion appealable to tlie Examiners-in-Chief, 
Lattig & G. V. Dean, 111 0. G. 301. 
Questions relating to the merits and to abandonment are 
appealable to the Examiners-in-Chief. 
100 0. G. 3012. 

' (4) Inoperativeness. 

The question whether certain elements necessary to an 
operative combination are brought into the claims is obviously 
one that relates to the merits. 

Lawton, 172 0. G. 259; Du Montav, 1879 C. D. 195; 
Muhl, 1880 C. D. 117; Ferguson, 56 0. G. 1334, 
1891 C. D. 143; Brisbane, 107 0. G. 109; Davidson, 
120 0. G. 2753; Nenninger, 122 0. G. 1379. 

( 5 ) Co mbination. 
A claim for an illegitimate combination, including diverse 
inventions, should be rejected and appeal taken to Examiners- 
in-Chief. 

46 0. G. 1391, 1889 C. D. 100; 83 0. G. 593, 98 0. G. 
2364. 



583 APPEAL TO EXAMINEES. Rule 133 

Lack of patentable combination. Aggregation. 

Ellis, 1876 C. D. 140; Pintsch, 1877 C. D. 43; Keith, 

1876 C. D. 93. 

Cases that pass on the subject matter of this rule: 

Ellis, 1876 C. D. 140; Kuth, 1876 C. D. 93; Pintsch, 

1877 C. D. 43; Barcellos, 1880 C. D. 4; Ketson, 1881 
C. D. 40; Eastman, 57 0. G. 410, 46 0. G. 139, 1889 
C. D. 100, 1891 C. D. 178; McClellan, 59 0. G. 1763, 
1892 C. D. 125; Dodge, 125 0. G. 665. 

(6) Aggregation. 

Questions of aggregation appealable to the Examiner-in- 
Chief. 

Baker, 1889 C. D. 232. 

Baker, 1889 C. D. 232; Feucht, 88 0. G. 2066. 

(7) Want of Identity. 

The question as to whether or not an applicant is entitled 
to amend his trade-mark application, is a question of new 
matter reviewable on petition. 
Benach, 197 0. G. 241. 
New matter goes to Examiner-in-Chief. 

Fadem & Berman, 155 0. G. 553; Thompson, 183 0. G. 
781. 
ISTew matter not appealable to Board. 

Edwards, 108 0. G. 1051. 
If the Examiner is of the opinion that the amendment con- 
stitutes new matter he should reject the claims affected 
thereby, and appeal should be taken to the Examiners-in- 
Chief. 

Smyth, 114 0. G. 762. 
A petition asking that the Examiner be instructed that it 
is not proper to insist upon cancellation of alleged new mat- 
ter is premature before the Examiners-in-Chief have decided 
that the amendment is of that character. 
Schmidt, 110 0. G. 603. 
Questions of "Claims involve new matter" or are "un- 
founded in the disclosure" appealable to Examiners-in-Chief. 
Hoegh, 100 0. G. 453. 
Amendments involving the departure of invention from the 
original disclosure raise no question for the Examiners-in- 
Chief, unless they consist of new claims, either in whole or 
in part, or unless they alter or enlarge the meaning of old 
claims. 

Gabel, 55 0. G. 863, 1891 C. D. 65. 



Rule 133 APPEAL TO EXAMINEES. 584 

When the objection of new matter is that it is merely in 
the descriptive part of the specification or drawing and does 
not effect the scope of the claim, an interlocutory appeal lies 
to the Commissioner; but when new matter appears in or 
affects a claim the appeal lies to the Examiners-in-Chief. 
Suler, 59 0. G. 1431, 1893 C. D. 113. 
For want of identity with the invention originally dis- 
closed. 

McDougall, 1880 C. D. 147; Lanstrom, 1880 C. D. 118 
Bennett, 35 0. G. 1004; Woodruff, 1880 C. D. 90 
Howlett, 1903 C. D. 338; Chapman, 130 0. G. 3446 
Nenninger, 133 0. G. 1397; Mcolin & Ochsenreiter, 
56 0. G. 1565, 1891 C. D. 155; Turner, Van Beck & 
Brown, 56 0. G. 1708, 1891 C. D. 165; Burt, 49 0. 
G. 1986, 1889 C. D. 351; Teller, 113 0. G. 548, 97 
0. G. 191; Courville, 96 0. G. 3061, 1901 C. D. 135. 

(8) Division. 

Cases that pass on the subject matter of this rule. 

Hulbert, 1894 C. D. 1; Frasch, 109 0. G. 1338; Tuttle, 
113 0. G. 1967; Teller, 113 0. G. 548; Richardson, 
113 0. G. 1751; Barnes, 115 0. G. 347; Gaily, 115 
0. G. 803. 

See notes to Rules 41, 43. 

(9) Reissue. 

The questions of inadvertence and laches in applying for 
a reissue will not be reviewed upon petition. 
McCombs, 105 0. G. 3057. 
Whether the facts set forth in the statement filed with a 
reissue application constitute inadvertence accident, or mis- 
take is one pertaining to the merits, and is appealable to the 
Board. 

Murphy & Atkinson, 56 0. G. 1449, 1891 C. D. 149. 

(10) Appeal to Board and to Commissioner. 

An appeal was taken both to the Board and to the Com- 
missioner in person. The case was decided a second time 
by the Commissioners on appeal from the Board. 
W. V. T., 101 0. G. 3835. 
Applicant appealed to the Board in an interference matter, 
then concluded that he ought to have appealed to the Com- 
missioner after time limited for appeal had expired. The 
petition to transfer appeal to the Commissioner was refused. 
Beck V. Long, 100 0. G. 451. 



585 APPEAL. TO EXAMINEES. Rule 133 

(11) Second Appeal. 

It is well settled that a second appeal fee is not required 
upon taking a second ex parte appeal to the Examiners-in- 
Chief from the rejection by the Primary Examiner of an 
Applicant's claims. 

Cheney v. Yenn, 125 0. G. 1703. 

See also note to 146. 
If new references are cited by the Examiner after appeal 
to the Board which references should have been cited before 
appeal, applicant will not be required to pay a second fee. 

Dysart, 34 0. G. 1390. 

(12) Interference. 

A decision of the Examiner-of-Interferences refusing to 
enter judgment on the record is not reviewable in an inter- 
locutory appeal. 

Mulligan v. Tempest Salve Co., 119 0. G. 1924. 
Questions of non-interference in fact are not appealable to 
the Board of Examiners-in-Chief. 

Kaczander v. Hodges & Hodges, 118 0. G-. 836. 
Questions of patentability arising under Eule 109 should 
be reviewed, if at all, in the first instance by the Examiners- 
in-Chief. 

Lemp V. Ball, 115 0. G. 249. 
The question whether the Examiner was right in rejecting 
the claims under the provision of Eule 96 would not be con- 
sidered upon this petition if the final rejection was regarded 
as regular. 

Schulze, 114 0. G. 1550. 
Interference decided adverse to G. for want of diligence 
on his part, D. being a foreign inventor, G. petitioned Com- 
missioner to order a reconsideration. Eefused. G.'s remedy 
is bv appeal to the Examiners-in-Chief. 

■'Gallagher V. Desprackels, 114 0. G. 973. 
The Examiners-in-Chief called the Primary Examiner's 
attention to the fact that one of the parties to the issue 
apparently had no right to make a claim to one count of the 
interference. The Examiner dissolved the interference as to 
this count. Appeal should be to the Examiners-in-Chief. 
Dittgen v. Parmenter, 107 0. G. 1098. 
A denial of motion to amend under Eule 122 is appealable 
to 

E T. C, 101 0. G. 1831. 
The decision on a motion of a party to an interference to 



Enle 133 appeal, to examinees. 586 

amend his application by inserting claims from his opponent's 
patent is appealable to the Board. 

B. V. F., 99 0. G. 862-3. 
Notice to dissolve an interference brought on various 
grounds among other interferences in fact appeal dismissed 
by Board because appealable directly to Commissioner. Held, 
as this question was involved with the right to make the claim 
that the Board should have decided it. 

0. & P. V. C. V. E., 99 0. G. 670. 

(13) Appeal to Board — Affidavit Under Rule 75 — 
Sufficiency of. 

Sufficiency of affidavit under Eule 75 a question of merits. 

Hamby, 183 0. G. 1031. 
As to whether said affidavit under Eule 75 must show dili- 
gence is appealable to Board. 
Hanby, 182 0. G. 511. 
Cases that pass on the subject matter of this rule. 

Boyer, 49 0. G. 1985, 1889 C. D. 249; Donovan, 52 0. 
G. 309, 1890 C. D. 109; Foster, 105 0. G. 261; Mars- 
tetler, 118 0. G. 2250; Nordstrom, 115 0. G. 1327. 

(14) Criticisms as to Wording and Description. 

Whether the structure recited is sufficient to sustain the 
whereby clause is appealable to the Board. 
173 0. G. 1081. 
An appeal from a requirement of the Examiner that an 
alleged erroneous description should be inserted goes to the 
merits, and is appealable to the Board. 
Braseir, 125 0. G. 2365. 
The question of the propriet}^ of defining an article by 
reference to its mode of manufacture seems to be one which 
may be considered properly by the Examiners-in-Chief in 
connection with the other questions of patentability. 
Warren, 120 0. G. 2755. 
The requirement that unnecessary matter be canceled from 
the drawing and specification of a design case is a mere rul- 
ing as to the form of the application and is not appealable 
to the Examiners-in-Chief. 
Mygatt, 118 0. G. 1685. 
The question as to the meaning of a word in claims held 
to go to the merits and to be appealable to the Examiner-in- 
Chief. 

Beucher, 104 0. G. 310. 
Objection that added element of one of several claims is 



587 APPEAL, TO EXAMINERS. Rule 133 

old and well known and does not patentably distinguish 
claim goes to merits. 
101 0. G. 499. 
Sufficiency of description appealable to Examiners-in-Chief. 

Coe, 81 0. G. 2086, 1897 C. D. 187. 
As to whether the drawing sufficiently illustrates the in- 
vention. 

Kitson, 81 C. D. 49; Barcellos, 80 C. D. 4. 

(15) Clearness — Functional. 

The objection that claims are functional apparently ap- 
pealable to the Board. 

Stimpson, 160 0. G. 1371. 
When the objection that a claim is functional, is appeal- 
able to the Commissioner and when to the Board. 
Plumb, 131 0. G. 1165. 
From the rejection of a claim because it is distinguished 
from the previous state of the art only by a functional lim- 
itation appeal in the first instance is to the Examiners-in- 
Chief. 

Morgan, 101 0. G. 2568, 1902 C. D. 451. 
Eejection under Eule 96 appeal to Board. 

97 0. G. 192. 
Rejections of functional claims are appealable to the Ex- 
aminers-in-Chief. 

Halfpenny, 73 0. G. 1135, 1895 C. D. 91. 
Question as to functional claim relates to merits. 

Williams, 61 0. G. 423, 1892 C. D. 213. 
The question of "incomplete combination of elements," and 
an objection that a claim covers only the function of a ma- 
chine, involves the merits and are appealable to the Exam- 
iners-in-Chief in the first instance. 

McClellan, 59 0. G. 1763, 1892 C. D. 125. 
An appeal from an objection that a claim is so lacking in 
clearness that no certain meaning can be gathered from it, 
is appealable to the Commissioner; but when the vagueness 
relates to the bounds of the invention the appeal lies to the 
Board. 

Reynolds, 1874 C. D. 119. 

(16) Laches. 

A question as to the propriety of rejecting a claim pre- 
sented after tbe time limited under Rule 96 is appealable to 
the Examiners-in-Chief. 

Ex parte Swift, 111 0. G. 2494; Ex parte Post, 112 0. 
G. 1214; Myero v. Brown, 112 0. G. 2093. 



Rule 133 APPEAL TO EXAMINEES. 588 

Laches in applying and inadvertences are questions that 
may only be appealed to the Board. 
McCombs, 105 0. G. 2057. 
Where an applicant who has been in interference seeks, 
after a decision of priority in his favor, to amend his claims, 
and the Examiner rejects his amendment as covering matter 
which applicant has claimed too late, the question should go 
to the Examiners-in-Chief. 

Woodward, 60 0. G. 1052, 1892 C. D. 179. 
Neither the rules nor the law confer upon the Commis- 
sioner the dangerous power of determining what appeals sea- 
sonably made are intended for delay. 

Pitney v. Smith & Egge, 49 0. G. 129, 1889 C. D. 193. 

(17) Two Claims Liferent. 

Whether two claims are patentably different is appealable 
to the Board. 

Chapman, 120 0. G. 2446, 1902 C. D. 416. 
Whether certain features are novel and claimable as such 
must be appealed to the Examiners-in-Chief. 
Petzold, 55 0. G. 1651, 1891 C. D. 95. 

(18) Rejection on Applicant's Previous Patent. 

Where the Examiner rejects a claim as not patentable in 
view of the allowance to the applicant of another claim, held, 
that the remedy is by appeal to the Examiners-in-Chief and 
not by petition. 

Besant, 116 0. G. 2531. 

It being settled that it is proper in some cases to reject 
upon reference to applicant's allowed case, the question 
whether the particular rejection was proper goes to the Ex- 
aminers-in-Chief. 

Davidson, 93 0. G. 191, 1900 C. D. 163. 

Where the Examiner holds that there is no proper line of 
division and rejects a claim upon the allowed case, the ques- 
tion whether his holding is correct relates to the merits 
and is appealable to the Examiners-in-Chief. It will not be 
reviewed upon petition. 

Osborne, 92 0. G. 1797. 

Where an application was rejected on a previously allowed 
application taken cumulatively with a patent and the appli- 
cant petitioned the Commissioner for relief from such action, 
the question was appealable to the Examiners-in-Chief. 
Seymour, 65 0. G. 751, 1893 C. D. 127. 

The question whether or not the Examiner should cite as 



589 PREREQUISITES. Eule 134 

a reference an applicant's former patent, the application for 
which was co-pending with the present application, is one 
pertaining to the merits and not reviewable on petition. 
McDonald, 64 0. G. 857, 1893 C. D. 99. 

(19) References. 

A dispute as to the date of a foreign patent cited as a 
reference will not be considered on petition. 
Beck, 105 0. G. 1781. 

(20) Additional Cases. 

Cases that pass on the subject matter of this rule. 

Bitner, 140 0. G. 256; Millett v. Eeed, 125 0. G. 2764; 
Mygatt, 121 0. G. 1675; Beath, 111 0. G. 2220; Kin- 
ney, 110 0. G. 2235; Harvey, 102 0. G. 622; Story 
V. Criswell, 100 0. G. 683, 1902 C. D. 262; Holland, 
99 0. G. 2548-49; Keith, 97 0. G. 551, 1901 C. D. 
155; Myers, 64 0. G. 859, 1893 C. D. 103; Johnson, 
89 0. G. 1341; Kuhn, 58 0. G. 1256, 1892 C. D. 46; 
Thomson, 56 0. G. 1203, 1891 C. D. 138; Laskey, 48 
0. G. 539, 1889 C. D. 181; Warren, 12 0. G. 2755. 

Rule 134. Prerequisites. 

There must have been two rejections of the claims 
as originally filed, or, if amended in matter of sub- 
stance, of the amended claims, and all the claims must 
have been passed upon, and except in cases of divi- 
sion all preliminary and intermediate questions relat- 
ing to matters not affecting the merits of the inven- 
tion settled, before the case can be appealed to the 
examiners in chief. 

HISTORY. 

The first sentence was in the Eules of 1869. The rest of 
the rule was added, substantially, in 1871. The words, "ISTot 
affecting the merits of the invention," were not in the Eules 
of 1871 or 1873, but are found in Eules of 1876. 

CONSTRUCTIONS. 

That the claim of the applicant for a patent shall have 
been twice rejected by the Primary Examiner is jurisdic- 
tional and a condition precedent to any right of appeal 



Rule 134 PREKEQUISITES. 590 

whatever. Such rejection has not been made in this case, 
and it can not be substituted by an order of rejection. 
Mann v. Brown, 214 0. G. 1026. 
Where, after thorough discussion of references with an 
Examiner, an issue has been reached and the applicant has 
received a second rejection upon the same claims in view 
of the same references he has a right to appeal at the time, 
notwithstanding the fact that the Examiner did not designate 
his action as a final action. 
McPhail, 141 0. G-. 1162. 
Whether the words used in the claims are objectionable as 
alternative must be settled before appeal taken. 
Phillips, 135 0. G. 1801. 
Whether words used in the claims are objectionable as 
alternative must be settled before appeal taken. 
Phillips, 135 0. G. 1501. 
Formal objections should be remedied before the appeal is 
forwarded. 

Dodge, 125 0. G. 665. 
Under Eule 134 appeal can not be taken until all formal 
questions relating to matters not affecting the merits of the 
invention have been settled. 

Thomas, 124 0. G. 623; Dodge, 125 0. G. 665. 
The Examiner was right in refusing to forward the case 
until- formal objections were removed. 
Mygatt, 111 0. G. 2493. 
The Examiner can not reject finally a claim that has been 
amended in matter of substance in one action. 
Slaughter, 105 0. G. 498. 
Appeal can not be taken on a part of the claims rejected. 
Benjamin, 103 0. G. 1680; Holland, 99 0. G. 2548-549, 
1902 C. D. 199. 
The amendment changed the wording of the claims and 
strictly construed they might be held to set forth features of 
construction not specifically included in the previous claims 
and therefore they can not be considered the same, although 
for the practical purposes of the examination the real inven- 
tion is the same. Amendment entered and claims stand re- 
jected. 

Courville, 96 0. G. 2061, 1901 C. D. 125. 
It is the fact of a second rejection and not the language 
of tbe letter that is material. However, the Examiners are 
instructed to state definitely that the rejection is final, here- 
after. They may, however, reconsider the case after final 
rejection if it is advisable in their judgment. 
Kendall, 93 0. G. 1754. 



591 PREREQUISITES. Rule 134 

The refusal of the Examiner to forward to the Examiners- 
in-Chief an appeal taken from his action holding that an 
application was not a proper divisional application, held, to 
have been properly made. Petition under Eule 145 proper. 
Fuller, 57 0. G. 1883, 1891 C. D. 343. 
The setting forth of the points of appeal are not of the 
essence of the proceeding, and do not confer jurisdiction as 
in appeals to the Court of Appeals. If the statement is de- 
fective the opponent may demand a better statement. 

Pitney v. Smith & Egge, 49 0. G. 129, 1889 C. D. 193. 
The first letter did not state that the claims were rejected, 
but after calling attention to certain formal objections, he 
cited references anticipating the claims (see Siliman, 34 0. 
Gr. 1389). After the formal objections had been eliminated 
the applicant was advised the references were adhered to. 
These actions justified the applicant in believing that there 
were two rejections and the appeal held to be proper. 
Mill, 40 0. G. 919, 1887 C. D. 92. 

Under Eule 129 two rejections are necessary to give 
either the Examiners-in-Chief, or the Commissioner, appellate 
jurisdiction of an application. 
Mill, 40 0. G. 919. 
An example of the setting forth of points of appeal. 

Huntly V. Smith, 1880 C. D. 182. 
Seasons for appeal not necessary to confer jurisdiction. 
If reasons are insufficient opponent may move to correct. 
Pitney v. Smith & Egge, 49 0. G. 129, 1889 C. D. 193. 
Amendments in matter of substance are such changes as 
affect the nature of the subject matter of the claim by the 
addition, or omission of certain features, or elements chang- 
ing the character of the invention as at first set forth, and 
which must amount to something more than a mere change 
of phraseology. 

Winchester, 1880 C. D. 92. (Hammond, 1872 C. D. 
149.) 
!N"either the Commissioner nor the Examiners-in-Chief 
should act upon a case unless the case is in condition to go 
immediately to issue if the Examiner is reversed. 
Mewes, 72 C. D. 163. 
The rule excludes all amendments, except special amend- 
ments after the case leaves the Examiner. 
Hammond, 1872 C. D. 149. 



/* 



Rule 135 examinee's statement. 592 

Rule 135. Examiner's Statement of Grounds of De- 
cision. 

Upon the filing of the appeal the same shall be 
submitted to theprimary examiner, who, if he find it 
to be regular in form, and to relate to an appealable 
action, shall within ten days from the filing thereof 
furnish the examiners in chief with a written state- 
ment of the grounds of his decision on all the points 
involved in the appeal, with copies of the rejected 
claims and with the references applicable thereto, 
giving a concise explanation of the invention claimed 
and of the subject matter of the references so far as 
pertinent to the appealed claims. The examiner shall 
at the time of making such statement furnish a copy 
of the same to the appellant. If the primary exam- 
iner shall decide that the appeal is not regular in 
form or does not relate to an appealable action, a 
petition from such decision may be taken directly to 
the Commissioner, as provided in Rule 142. 

HISTORY. 

This statement of the reasons of appeal should point out 
distinctly and specifically the supposed errors of the Ex- 
aminer 's action and should constitute a brief of the argument 
upon which the applicant will rely in support of his appeal. 
Before the appeal is entertained by the Board, this state- 
ment will be submitted to the Primary Examiner who will 
make answer in writing touching all the points involved 
therein. Eule 42 of 1873. 

The provisions making the Primary Examiner the judge 
of whether or not the appeal is regular in form was inserted 
in Eules of December 1, 1879, and also the requirement of 
copies of the rejected claims and references applicable thereto. 

CONSTRUCTIONS. 

The statement should have been complete in itself and not 
have referred to the decision in another case previously con- 
sidered by the Examiner-in-Chief unless the decision was 



593 examiner's statement. Rule 135 

cited in support of some contention of law which could be 
understood without understanding the invention. 
Morrison, 157 0. G-. 1271. . 

After new grounds of rejection the Examiner offered to let 
applicant withdraw his appeal, which he did not do. Too late 
after appeal. 

Blackmore, 140 0. G. 1209. 

The practice of raising objections for the first time in the 
the statement upon petition is not approved. To entertain 
such objections upon the petition where argument is made 
by the applicant in opposition to them would impose upon 
the Commissioner labor which should be performed as far as 
possible by the Examiner. The additional objection will not 
be considered upon this petition. (Trade-mark.) 

Jos. B. Punke Company, 124 0. G. 2902. 

If the Examiner discovers a new reason for rejection he 
should direct the attention to it of both the applicant and 
the Examiners-in-Chief. The applicant may thereupon con- 
tinue to prosecute the application as though the new refer- 
ence had been cited before the appeal had been taken or he 
may continue the prosecution of the appeal. (Mevey, 56 0. 
G. 805.) 

Williams, 116 0. G. 298. 

Where an appeal is regular in form it is the duty of the 
Examiner to answer it. 

U. S. ex rel. Steinmetz & Allen Com., 109 0. G. 549. 

No appeal from reasons for a decision. 
Gebboney, 105 0. G. 976. 

It is improper for an Examiner to refer in his answer to 
matters not of record. If after appeal he shall discover new 
grounds for rejection he shall notify applicant and the Ex- 
aminers-in-Chief. 

Dolan, 99 0. G. 2321, 1902 C. D. 193. 

It is improper for an Examiner to cite a decision of the 
appellate tribunal in a pending case to which applicant has 
not access. 

99 0. G. 668,, 1902 C. D. 144. 

Petition to expunge argumentative matter and new reasons 
of rejection from the Examiner's statement refused. 

If the Examiner discovers new grounds for rejection after 
appeal, he should call the attention of both applicant and the 
Board to them. Applicant may then elect whether to con- 
tinue the appeal or to withdraw the same and be heard by 
the Primary Examiner. 

Mevey, 56 0. G. 805, 1891 C. D. 115. 



Eule 136 APPEAL FEOM EXAMINERS-IN-CHIEF. 594 

The present rules do not require that the reasons of appeal 
shall constitute a brief of the argument upon which appli- 
cant will rely, but is only that the point or points of decision 
from which appeal is taken shall be specified. 
Callahan, 50 0. G. 990, 1890 C. D. 24. 
All the references and reasons should be recited at or be- 
fore final rejection; but if from any causes important reasons 
or references shall be overlooked or omitted the attention of 
the appellate tribunal should certainly be called to them. 
Parker, 36 0. G. 119, 1886 C. D. 15. 
If new references or reasons are discovered by the Exam- 
^ iner after appeal taken, applicant should be promptly in- 
formed of them. 

Parker, 36 0. G. 119. 
If the appeal is taken the Examiner should not only urge 
his objections to the validity of the combination (the appeal 
being on this point), but also cite all references he may have 
affecting the question of novelty, whether relating to the al- 
leged combination or to other matters claimed in the appli- 
cation. 

Pintsch, 1877. C. D. 43. 
The Examiner should not raise new objections in his state- 
ment 

Shippen, 1875 C. D. 126. 
The Examiners-in-Chief are the judges of the sufficiencies 
of the reasons for the appeal. The principal Examiner can 
not refuse to allow an appeal because the reasons are insuffi- 
cient. 

Young, 1875 C. D. 124. 
The Examiner's objections should be definite, such as will 
allow of an issue being formed. 
Evarts, 1871 C. D. 39. 

Rule 136. Appeal from Examiners-in-Chief to Com- 
missioner. 

From the adverse decision of the board of exam- 
iners in chief appeal may be taken to the Commis- 
sioner in person, upon payment of the fee of $20 re- 
quired by law. 

Rev. Stat., sec. 4910. 



595 ORAL. HEARINGS AND BRIEFS. Rule 137 

CONSTRUCTIONS. 

Amendment of the claims suggested and case remanded 
with authorization to the Examiner to admit the amend- 
ment and allow the claims. 
Burnham, 173 0. G. 260. 
The practice of submitting new claims to Commissioner 
on appeal disapproved. 
Sears, 148 0. G. 379. 
Apparently no appeal from refusal to make a recommen- 
dation under rule. 

Ball V. Mora, 117 0. G. 3363. 
In the exercise of his authority the Commissioner may 
assign an appeal to the Assistant Commissioner for hearing. 
U- S. ex rel. Stapleton v. Com., 93 0. G. 3533, 95 0. G. 
1049. 
The statute and rules allow applicants two (now one) 
years in which to appeal to the Commissioner. 
Williams & Eaidabaugh, 40 0. G. 1337. 
If applicant goes back to the Primary Examiner and 
amends his case he waives his right of appeal. 
Williams & Eaidabaugh, 40 0. G. 1337. 
It has been the established practice of the Ofl&ce where 
both the lower tribunals are agreed upon the facts, not to 
overthrow their decisions thereon unless clearly at variance 
with the testimony. 

Walpuski V. Jacobsen & Faben, 1876 C. D. 114; Fawcett 
V. Graham, 1869 C. D. 113 ; Dickson v. Kinsman, 
1880 C. D. 311; White v. Purdy, 1870 C. D. 115; 
Berry v. Stockwell, 1869 C. D. 47 ; Blanchard v. Stain, 
1870- C. D. 55; Eussell v. Scow, 1874 C. D. 23. 
A case that passes on the subject matter of this rule. 
Millett V. Eeed, 125 0. G. 2764. See note to 68. 

Rule 137. Oral Hearing Before Examiners in Chief — 
Briefs. 

The appellant shall on or before the day of hearing 
file a brief of the anthorities and arguments on which 
he will rely to maintain his appeal. 

If the appellant desire to be heard orally, he will 
so indicate when he files his appeal ; a day of hearing 
will then be fixed, and due notice thereof given him. 



Rule 138 EECONSIDEEATION. 596 

CONSTRUCTIONS. 

A written certificate of counsel will not be stricken out 
as a supplemental brief. 

Lindstrom v. Lipschutz, 120 0. G. 90. 
Briefs on interlocutory motions and appeals need not be 
printed, but must be filed before the hearing. 
Eoyce v. Kempshall, 116 0. G. 3011. 
In all cases briefs should be filed before the hearing. Only 
one brief. 

Newcomb & Lemp, 109 0. G. 3171. 

Rule 138. Application Remanded for Reconsideration 
on Affidavits. 

Affidavits received after the case has been appealed 
will not be admitted without remanding the applica- 
tion to the primary examiner for reconsideration ; but 
the appellate tribunals may in their discretion refuse 
to remand the case and proceed with the same without 
consideration of the affidavits. 

HISTORY. 

Eule 135 of 1879 reads as follows: "If affidavits be re- 
ceived, under Eule 75, after the case has been appealed, the 
application will be remanded to the Primary Examiner for 
reconsideration." 

In 1880 affidavits "under Eules 75 or 86" were specified. 

In 1893 Eule 141 read as in 1879, except "under Eule 75" 
was omitted. 

Present rule introduced in 1906. 

CONSTRUCTIONS. 

Apparently the fact that the Commissioner did not remand 
the case was equivalent to refusing to consider the affidavits. 
Merrill, 199 0. G. 618. 

When presented after final rejection or appeal affidavits 
or other new evidence should be accompanied by a verified 
showing of reasons for the delay, such as required by Eule 
68, in the case of tardy amendments touching the merits of 
an application. 

Pierce, 131 0. G. 1347. 

It is a well-settled principle that no evidence should be 
considered on appeal that was not before the tribunal from 



597 EXAMINEES IN CHIEF. Rule 139 

which appeal was taken. The affidavit referred to may have 

a material bearing. For this reason the case is remanded. 

Penn Tobacco Co., 125 0. G. 2764, 1906 C. D. 523. 

It is probable that in order to have it passed upon, the 
applicant should have requested that his application be re- 
manded to the Examiner with leave to amend by inserting 
said claim. It could then have been brought up in regular 
order. 

Garrett, 123 0. G. 1047, 1906 C. D. 645. 

An affidavit has been filed in behalf of Townsend, by one 
Fredenreich, which is wholly expert in character. At the 
hearing a motion was made in behalf of Copeland to strike 
this affidavit from the record. It was argued that if the 
motion to reopen was granted the affidavit might form a 
basis for or necessitate the introduction of expert testimony. 
Motion granted. 

Eobinson v. Townsend v. Copeland, 106 0. G. 997. 

Rule 139. Decisions of Examiners in Chief. 

The examiners in chief in their decision shall af- 
j&rm or reverse the decision of the primary examiner 
only on the points on which appeal shall have been 
taken. (See Rule 133.) Should they discover any 
apparent grounds not involved in, the appeal for 
granting or refusing letters patent in the form 
claimed, or any other form, they shall annex to their 
decision a statement to that effect with such recom- 
mendation as they shall deem proper. 

Should the examiners in chief recommend the re- 
fusal of letters patent in the form claimed, their rec- 
ommendation will stand as a rejection and will re- 
open the case for amendment or showing of fact, or 
both, before the primary examiner, responsive to that 
rejection. The recommendation of the examiners in 
chief is binding upon the primary examiner unless an 
amendment or showing of facts not previously of 
record be made which, in the opinion of the primary 
examiner, overcomes the recommendation. The ap- 



Rule 139 EXAMINEES IN CHIEF. 598 

plicant may waive the right to prosecution before the 
primary examiner and have the case reconsidered by 
the examiners in chief upon the same record, and 
from an adverse decision of the examiners in chief 
on reconsideration, appeal will lie to the Commis- 
sioner, as in other cases. The applicant may also 
waive reconsideration by the examiners in chief and 
appeal directly to the Commissioner. 

Should the examiners in chief recommend the grant- 
ing of letters patent in an amended form^ the appli- 
cant shall have the right to amend in conformity with 
such recommendation, which shall be binding upon the 
primary examiner in the absence of new references 
or grounds for rejection. 

If the Commissioner, in reviewing the decision of 
the examiners in chief, discovers any apparent 
grounds for refusing letters patent not involved in 
the appeal, he will, before or after decision on the 
appeal, give reasonable notice thereof to the appli- 
cant; and if any amendment or action based thereon 
be proposed, he will remand the case to the primary 
examiner for consideration. 

Eev. Stat., sees. 483 and 4909. 

CONSTRUCTIONS. 

(1) EULE IN" GeNEKAL. 

(2) DECISIOlSr CONTINED TO IsSUE. 

(3) Eecommendations. 

(4) Peimaey Examinee. 

(5) Additional Cases. 

(1) Rule in General. 

As these claims were presented as a substitute for the 
appealed claims, the decision of the Examiner-in-Chief will 
be affirmed, and if the amendment containing proposed claims 
two and three, corrected as above indicated, is presented with- 
in 20 days from the date hereof, the Examiner is authorized to 



599 EXAMINERS IN CHIEF. Rule 139 

enter it and allow the claims in the absence of further ref- 
erences. 

Child, 231 0. G. 919. 
It is well within the jurisdiction of the Commissioner to 
order a dissolution of the interference and the rejection of 
plaintiff's claims if convinced that the issues were barred by- 
public use and therefore not patentable. From the decision 
of the Primary Examiner rejecting plaintiff's claims when 
the case goes back from the Board of Examiners-in-Chief 
plaintiff would have an appeal through the tribunals of the 
Patent Office to this court. 

U. S. ex rel. Dwiggins v. Ewing Com. of Patents, 214 
0. G. 1035. 
If a new reference is cited the case should be reconsidered 
by the Primary Examiner. 
Wade, 158 0. G. 704. 
In the absence of one member of the Board, a decision by 
the other two constitutes a decision by the Examiners-in- 
Chief. If the two disagree, the case should be set down for 
hearing before the three. 

Hilbig, 131 0. G. 1687. 
New reference found after appeal in view of this fact, final 
judgment on the appeal will be suspended for 30 days. If 
an amendment or other action is filed, the case will be re- 
manded to the Primary Examiner for further consideration. 
If no action is taken the right to amend will be regarded as 
waived, and a decision, considering the new reference, will 
be given. If the applicant does not desire to amend a re- 
hearing of the appeal will be granted for argument on the 
new reference if desired. 
Farling, 138 0. G. 886. 
No decision upon patentability against any of the parties 
can be founded on the testimony taken upon the question of 
priority without permitting such parties to offer further evi- 
dence if they so desire. 

Niedringhaus v. Marquard v. McConnell, 118 0. G. 16"83. 
An appeal includes only such claims as have been duly 
entered in the case. 

Durafort, 110 0. G. 3017. 
If only two members are present and these have opposite 
opinions, the Primary Examiner is affirmed. 
91 0. G. 3207. 
The Board of Examiners-in-Chief is a tribunal of appellate 
and not original jurisdiction. The principle Examiner can 
not submit a question to it without expressing an opinion. 
Coleman, 1880 C. D. 205. 



Rule 139 EXAMINERS IN CHIEF. 600 

The third and fourth paragraphs are designed to secure 
the applicant from the effect of a final adjudication of his 
application upon ground of which he has had insufficient 
notice. 

Eeynolds, 24 0. G. 993, 1883 C. D. 56. 
The applicant is entitled to an opinion which shall em- 
body the judicial opinion of the Examiners-in-Chief. 
Buchanan, 79 C. D. 288. 
The Board may affirm the decision of the Examiner while 
it may discard entirely the adequacy of his reasoning. 
Jones, 1874 C. D. 53; Eockwell, 1870 C. D. 111. 
The board should give the reasons for their decisions in 
all cases 

Chamblant, 1873 C. D. 119; Buchanan, 288. 

(2) Decision Confined to Issue. 

The alleged grounds seem to have been disregarded, and 
the appeal received upon the real or substantial grounds. 
Evidence not before Primary Examiner considered. 
Harrison v. Shoemaker, 117 0. G. 1164. 
An appeal in the Patent Office is analogous to an appeal 
in equity and not to writ of error, the whole case may be 
examined de novo. 

Packard v. Sandford, 79 C. D. 314; Dickson v. Kinsman, 
80 C. D. 211. 
In an interference case appealed to the Board on the ques- 
tion of priority, it is improper to go into the question of 
identity of invention. 

Brown v. La Dow, 1880 C. D. 199. 
The Primary Examiner not having alluded to the question 
of new matter, the Examiners-in-Chief should have confined 
their action to the making of the statement to the Commis- 
sioner, as the rule provides. 
Smoot, 1877 C. D. 51. 
The Board cannot go outside of the record . . . as to 
cite new references. > 

Jones, 1874 C. D. 53. 
As to matter of executive detail. 

Eockwell, 1870 C. D. Ill; Merton, 1871 C. D. 169. 
The Board of Examiners-in-Chief are not confined in their 
decision to affirming, or reversing, the reasons for rejection 
given by the Primary Examiner. 

Jones, 1874 C. D. 53; Eockwell, 1870 C. D. 111. 



601 EXAMINERS IN CHIEF. Rule 139 

Eemarks disparaging the character of the invention are of 
doubtful propriet}^ 

Morse v. Clark, 1872 C. D. 58; Cheesborough, 1869 C. 
D. 18. 

(3) Recommendations. 

Had they so intended, they would have annexed a recom- 
mendation to this effect to their decision. 
Norhind, 192 0. G. 989. 
Where the Examiner-in-Chief recommended that certain, 
claims be rejected upon new grounds stated by them, held, 
that the action of the Examiner in rejecting the claims upon 
the return of the case to him, for the reasons stated in the 
decision of the Examiner-in-Chief, was clearly a proper one, 
and since it was a new ground of rejection it opened the 
case for further prosecution as to the subject-matter of re- 
jected claims. 

Luten, 170 0. G. 482, citing Dietrich, 142 0. G. 568. 
The recommendation is binding on the Primary Examiner. 

White, 157 0. G. 1243. 
Practice analogus to that under Eule 126 as set forth in 
Holz Y- Hewitt. The Examiner is therefore directed to enter 
a rejection pro forma upon the grounds stated by the Ex- 
aminers-in-Chief, and any other reasons which have not been 
considered by the Examiners-in-Chief. 
Shaw, 131 0. G. 1687. 
The suggestion of claim by the Examiners-in-Chief does 
not reopen the case for the admission of other claims. 
Myers, 119 0. G. 902. 
If the Examiners-in-Chief had concluded that amendment 
was proper and necessary to protect the invention set forth 
in the claims before them, it is to be presumed that they 
would have made a recommendation to that effect. 
East, 116 0. G. 1186. 
They made no recommendation under Eule 139 as they 
presumably would have done if they thought applicant was 
entitled to other claims. 

Bourne, 110 0. G. 2510. 
The Examiner is justified in holding that a case is beyond 
his jurisdiction when his ruling rejecting a claim has been 
affirmed on appeal unless the Examiners-in-Chief annex a 
specific recommendation to their decision. 
LeBlanc. 98 0. G. 225. 
If the Board recommend amendment of the drawings and 
specification, such amendments may be made, but not others. 
Beck, 97 0. G. 2746. 



Rule 139 EXAMINEES IN CHIEF. 602 

It is proper for the Examiners-in-Chief to make a sugges- 
tion to that effect, when on the consideration of claims on 
appeal they become convinced that the applicant has made 
an invention, but has claimed it in a wrong form. 
97 0. G. 1175. 
The interpretation adopted by the Board in a collateral 
matter^ as for example the mode of operation of the device 
is not binding upon the Primary Examiner. 
Ex parte Christensen, 92 0. G. 1619. 
It is not competent for the Board to recommend that an 
application for a process be changed to an application for an 
apparatus. 

Adams v. Murphy, 91 0. G. 2373, but see case on re- 
hearing, Adams v. Murphy, 91 0. G. 2209. 
Such statement and recommendation can not be ignored or 
pleaded as of no efEect. It is binding upon the Examiner 
and can not be disregarded. 

Letellier, 81 0. G. 1611, 1897 C. D. 171. 
A decision by the Examiners-in-Chief affirming a rejection 
by an Examiner, subject to certain recommendations made 
by them, is such an affirmance of the Examiner's decision 
that a petition to the Commissioner asking "that a record 
decision affirming the patentability of the invention in issue 
may be entered" will not lie. 

McGowan, 1892 C. D. 168, 60 0. G. 735. 
No appeal from a refusal of the Examiners-in-Chief to 
make a recommendation. 

Schmiedl v. Walden, 1891 C. D. 150, 56 0. G. 1563. 
The recommendations of the Examiners-in-Chief are not 
binding upon the Primary Examiner, but there is no good 
reason why an applicant should be put to the delay involved 
in going through a second appeal, simply to have the Ex- 
aminers-in-Chief formally affirm what they have already de- 
cided in substance. 

Williamson, 56 0. G. 1060, 1891 C. D. 128. 
The Examiner may not allow amendments without the 
authority of the Commissioner after the decision of the Ex- 
aminers-in-Chief. 

Williams & Eaidabaugh, 40 0. G. 1337. 
An example of recommendation by the Board. 

Dod V. Cobb, 1876 C. D. 196. 
The authority of the Board extends to passing upon the 
merits of claims merely as they come from the Primary Ex- 
aminer. It is also proper for them to make suggestions of 
alterations in either the specifications or claims, or with ref- 



603 KEHEARiNGs. Rule 140 

erence to other matters which may appear to them to be of 
importance either to the Office or to the applicant, and they 
would be derelict if they did not, but such suggestions have 
no binding force. 

Dodge, 1873 C. D. 202. 

(4) Primary Examiner. 

If the Board and the Primary Examiner disagree, the case 
should be referred to the Commissioner, but not if amend- 
ments have been made. 

Allen, 109 0. G. 1071. 
When a case is sent back to the Primary Examiner with 
the recommendation of the Board, the Examiner must con- 
fine his decision to the point suggested by the Board. 
Kirkbride, 1876 C. D. 123. 
When a case is appealed to the Board the Examiner loses 
control over it, except to enter the amendment required by 
the Board. He can not require further amendments. 
Brunner, 1872 C. D. 62. 

(5) Additional Cases. 

Cases that pass on the subject matter of this rule. 

Duryea & White v. Eice, 123 0. G. 2627; Myers, 122 
G. 351; Steinmetz, 117 0. G. 901; Burrowes, 110 
0. G. 599. 

Rule 140. Rehearings. 

Cases which have been heard and decided by the 
Commissioner on appeal will not be reopened except 
by his order; cases which have been decided by the 
examiners in chief will not be reheard by them, when 
no longer pending before them, without the written 
authority of the Commissioner; and cases which have 
been decided by either the Commissioner or the ex- 
aminers in chief will not be reopened by the primary 
examiner without like authority, and then only for 
the consideration of matters not already adjudicated 
upon, sufficient cause being shown. (See Rule 68.) 



Rule 140 REHEAEINGS. 604 

CONSTRUCTIONS. 

History reviewed. 

Daniels v. Morgan, 1889 C. D. 150, 47 0. G. 811, 1889 
C. D. 182. 
Mandamus will not lie to compel the Commissioner to re- 
open an interference. 

Briggs V. Commissioner, 257 0. G. 645 and 648. 
Eehearing petition for 201 0. G. 569. 

New information from client after appeal. A new trial 
not granted. 

Wright, 193 0. G. 509. 
An interference dissolved because of inoperativeness of one 
of the party's device not res adjudicata. 

Moore Co. v. IJ. S., ex rel. Colburn Gloss Co., 191 0. 
G. 293. 
A judgment against an applicant in a trade-mark case, 
precludes a new application. 

Bostion Wine & Spirits Co., 189 0. G. 524. 
A mistake as to the attitude of a witness toward a party 
is not such an excuse for not calling him as would justify re- 
opening of the case to take his testimony. 
Webber v. Wood, 184 0. G. 553. 
There is no rule of • the Patent Office providing for peti- 
tions for new trial or review, but the power to entertain 
such petitions and reopen the case has been exercised in the 
Office in two former instances. 

Cooper and Somers v. Bannester, 112 0. G. 1480; Grif- 
fiths V. Taylor, 91 Ms. A. D. 1908. 
The right assumed to exist, however. 

Browne v. Dyson and Sand, 173 0. G. 866. 
An interference between B. D. and L. I. did not appeal. 
After time for appeal had expired, D. conceded priority to 
L. and the case was reopened and judgment rendered in 
favor of L. 

Browne v. Browne Dyson & Land, 173 0. G. 866. 
Whether or not a ruling that the year begins to run at a 
certain date is correct or not will not be considered until the 
application is held to have been abandoned unless the error 
is clear. 

Inman, 160 0. G. 1038 (149 0. G. 309). 
A rehearing on the grounds that the tribunal was not in- 
formed as to the state of the art will not be granted because 
it was petitioner's duty to see that it was so informed. 
White V. Powell, 160 0. G. 776. 



605 EEHEAEiNGS. Rule 140 

Eehearing of an appeal will not be granted to present mat- 
ter not presented to the Primary Examiner. 
White V. Powell, 160 0. G. 776. 
A rehearing peculiarly within the discretion of the Exam- 
iner of Interferences. 

Denlap v. Creveling v. Eector, 160 0. G. 776. 
Counsel considered evidence as proper rebuttal matter, 
when it was refused as not proper, rebuttal motion was made 
to open case for the purpose of extending the time to take 
testimony ... is not an appealable question, 

Goodfellow V. Jolly, 115 0. G. 1064; Christenson v. Mc- 
Kenzie, 117 0. G. 277; Wickers and Furlong v. Wein- 
wurm, 129 0. G. 2501; California Fruit Canners As- 
sociation V. Eaticliff-Sanders Grocer Co., 146 0. G. 
958. 
An applicant who prosecutes broad claims to a final con- 
clusion has no right to the reopening of the case for the in- 
sertion of narrower claims. Snow, 80 0. G. 1271. xA.nd after 
a decision by the Court of Appeals new claims may not be 
admitted because the appellate tribunal put an unexpected 
construction upon the claims. 
Millans, 135 0. G. 1122. 
An interference decided against a party who afterward 
found he had an earlier application in the Office which would 
have altered the result apparently. A petition to withdraw 
such case from issue for the purpose of an interference re- 
fused, and an interference refused on a renewed application 
after that one had lapsed. 

Cutler V. Hall, 135 0. G. 449. 
The Court of Appeals having held that a second interfer- 
ence involving claims differing only in scope from those in- 
volved in the first interference should not have been declared, 
the latter will not be reopened for the purpose of allowing 
the issue of second interference to be contested therein. 
Wende v. Horine, 130 0. G. 1311. 
That a patent showing the invention was issued to one of 
the contestants in an interference proceeding, will not war- 
rant a rehearing. 

Latshaw v. DufEy v. Kaplan, 130 0. G. 980. 
The granting of a rehearing or a refusal to grant the same 
are matters within the discretion of the tribunal having juris- 
diction of the case at the time, and it is a well-settled prin- 
ciple that the Commissioner will not control that discretion 
except to prevent irreparable injurv. 

Donning v. Fisher, 135 0.' G. 2765. 



Rule 140 REHEAEINGS. 606 

If the interference is to be reopened at all it should be 
done at once and not delayed until appellant has had an 
opportunity to test the sufl&ciency of the present record before 
the various tribunals. 

Newell V. Clifford v. Eose, 125 0. G. 665. 

It appears that the Commissioner of Patents, under the 
provisions of Eule 143 of the Patent Office which does not 
prescribe a specific time within which an appeal may be taken 
from a decision of the Examiner of Interferences, and under 
the provisions of Section 4904 of the Eevised Statutes, which 
prescribes that certain appeals may be taken within such 
time as the Commissioner of Patents may prescribe, "not 
less than 20 days," fixes the time for appeal in this case at 
20 days. 

Wenzelmann v. Ooerliolt, 123 0. G. 995. 

No cause for surprise if a rehearing is not granted so as 
to excuse taking an appeal within the time limit. 

It is well settled that a mere request for a rehearing does 
not extend the limit of appeal. 

Felsing v. Nelson, 122 0. G. 1722. 

An interference case will not be reopened for the introduc- 
tion of testimony which can only result in a denial of a 
patent and not in altering the result as to priority. 
Dunbar v. Schellenger, 121 0. G. 2663. 

The question of abandonment of an application decided 
by a former Commissioner will not be reviewed except upon 
a clear and satisfactory showing that the Commissioner was 
misled by the applicant, as to the facts, and mere expert 
affidavits can not be regarded as such showing. 
Kinsman v. Strohm, 120 0. G. 2127. 

An interference which has been reopened to admit deposi- 
tion connecting an exhibit with original testimony will not 
be again reopened to correct said deposition. 

Autenrieth & Kane v. Sorensen, 120 0. G. 1164. 

If a second application is presented in place of one re- 
jected it should be examined far enough to ascertain its 
nature and then rejected as res adjudicata. 

Millitt and Eied, 128 0. G. 2836; Kenney, 118 0. G. 
2936; Com. of Pat. v. Whitely, 71 U. S. Sup. Ct. 

No amendment allowed between appeals. It is funda- 
mental that the same case must be presented to the higher 
tribunal as was considered by the tribunal from which the 
appeal is taken. 

Marks, 118 0. G. 2253. 

The doctrine of res adjudicata applies to the decisions of 



607 EEHEARiNGS. Rule 140 

this Office as well as to decisions of the Courts. The new 
application should be received and rejected for above reason, 
Kinney, 118 0. G. 2253. 

Where it is alleged that there was error in the Examiner's 
decision because of a misunderstanding as to an oral waiver 
made at the hearing, held^ that the error niust be corrected 
by motion for rehearing promptly made and that it can not 
be corrected long after the limit of appeal has expired. 
Hansen v. Wardwell, 116 0. G. 2008. 

An applicant has no right to amend after decision on ap- 
peal except under unusual circumstances and where a proper 
showing is made. 

Amer, 116 0. G. 595; Lesler, 117 0. G. 595. 

An interference will not be reopened after decision upon 
an ex parte request of one of the parties, but only upon 
motion served upon the opposing party and supported by a 
showing of good reasons. 

Smith V. Locklin, 116 0. G. 2009. 

There is no appeal from a decision refusing to grant a 
rehearing. 

Cole V. Zarbock v. Greene, 116 0. G. 1451. 

Where a decision is rendered by a tribunal and it appears 
that an affidavit relating to the matters at issue was ffied too 
late to be considered, held, that the appellant should move 
for a rehearing, rather than appeal, since matters not con- 
sidered by the- tribunal of original jurisdiction will not be 
reviewed on appeal. 

Ocumpaugh v. McElroy, 115 0. G. 1847. 

Case will not be reopened to take further testimony when it 
appears that the testimony already taken relates wholly to 
the right of the opposing party to make claims. 
Osborn v. Austin, 115 0. G. 1065. 

If there is error it should have been corrected by rehearing 
or by appeal. The decision has become final by the expira- 
tion of the limit of appeal, and it is now too late to raise 
the question of error, even by concession of priority by the 
successful party. 

Humphrey v. Fickert, 115 0. G. 803. 

A motion for a new trial is proper pending an appeal. 
Clement v. Eichards v. Meissner, 111 0. G. 1627. 

The applicant is not entitled to demand consideration of 
new claims after appeal, whether they are patentable or not. 
Bourne, 110 0. G. 2510. 

The fact that a party failed to recollect certain facts is an 
insufficient reason for a new trial. Moreover the alleged new 



Rule 140 REHEAKINGS. 608 

evidence must be sufficient so that is ' might produce a dif- 
ferent result. 

French v. Halcomb, 110 0. G. 1737. 
If the Examiners-in-Chief recommended the rejection of 
a claim upon a reference not cited by the Primary Examiner 
and the Primary Examiner adopts such suggestion, the ap- 
plicant has a right to amend. 
Burrowes, 110 0. G. 599. 
Examiner extended limit of appeal upon the showing that 
applicant was a resident of England. 

Wilderman v. Simm, 109 0. G. 275. 
Where a motion to vacate a judgment of priority is not 
based upon newly discovered evidence, the question of pri- 
mary importance is why the facts were not sooner pr.esented 
by proper motion. 

Eowler v. Boyce v. Tqmple et al. v. Dyson v, McBerty, 
107 0. G. 543. 
After a case has been decided by the Court of Appeals it 
must ordinarily be regarded as disposed of. 
Starkey, 105 0. G..745. 
It is the practice not to grant hearings upon petitions to 
reopen an application after the same has been considered and 
disposed of on appeal. 

Borton, 104 0. G. 851-2. 
iN'o appeal lies from a refusal of a lower tribunal to grant 
a rehearing. 

Reynolds v. Bean, 101 0. G. 2821. 
Refusal to rehear is not an appealable action. 
Macey v. Laning v. Caster, 101 0. G. 1608. 
A delay of six months witli failure to show reasons of de- 
lay, or that rierparable injury will be the result of a refusal. 
Petition denied. 

Harrison, 100 0. G. 3013. 
N'ewly discovered evidence — a new trial for must show 
greatest diligence. Where a letter was found which had been 
wrongly labeled and therefore overlooked. Xew trial denied. 
Eobinson v. Townsend v. Copeland, 100 0. G. 683. 
It is not the practice of the office to set for hearing mo- 
tions for rehearing unless an examination of the record shows 
that a rehearing ought to be granted. 
Adams v. Murphy, 91 0. G. 2373. 
It is within the discretion of the Commissioner to refuse 
to reconsider a matter upon a new application. 
Fav V. Com., 90 0. G. 1156. 



609 EEHEAEiNGs. Rule 140 

Manifest error in law, being ground for a new trial, is 
also ground for a rehearing under Eule 144. 

Green v. Hall v. Siemens v. Field, 1889 C. D. 161, 47 
0. G. 1631, c. c. 1889 C. D. 110-156, 88 0. G. 459, 
81 0. G. 2087. 
The Court of Appeals has several times considered and 
denied the right of an applicant to burden the office with 
successive applications relating to the same supposed inven- 
tion. 

Barratt, 87 0. G. 1075; Fav, 90 0. G. 1157; Mond, 91 
0. G. 1437; Nealon, 1897^0. D. 174, 81 0. G. 1787. 
The Examiner can not, under the rules, after a decision 
of the Examiners-in-Chief, admit even allowable claims, un- 
less such claims are recommended by the Examiners-in-Chief, 
without written authoritv from the Commissioner. 
Hunter, 1897 C. D." 161, 81 0. G. 504. 
Where on appeal only broad claims were presented which 
were refused, held, that the case should not be reopened to 
admit narrow claims. 

Snow, 1897 C. D. 48, 80 0. G. 1271. 
Eehearings should not be lightly granted or sought without 
weightv reasons. 

Atwater, 1897 C. D. 36, 80 0. G. 965. 
A new trial allowed after two years, and after patent issued. 

Hibbard v. Eichmond, 80 C. D. 136. 
To a motion for a rehearing diligence is a jDrerequisite. 
Wicks V. McAvov, 80 C. D. 190; Aldrich v. Bingham, 
71 C. D. 90; Covel v. Maxim & Eadley, 69 C. D. 78; 
Munson, Imlay, etc., 72 C. D. 183; Stevens v. Putnam, 
80 C. D. 160. 
Evidence which is merely cumulative is insufScient to war- 
rant a new trial. 

Stevens v. Putnam, 80 C. D. 160.. 
Misstatements in an argument are not grounds for a new 
trial. 

Wicks V. McAvoy, 80 C. D. 190. 
On motions for a rehearing the question of fact always is, 
whether the findings of fact in the former decision are either 
wholly unsupported by or clearly in conflict with the evi- 
dence. 

Packard v. Sandford, 79 C. D. 314; Huttner v. Knox, 
79 C. D. 247. 
Except upon a new state of facts or upon grounds which 
would support a motion for a new trial. 

Lee V. Walsh, 79 C. D. 29; Huttner v. Knox, 79 C. D. 
281; J. L. Mason, 70 C. D. 20. 



Eule 140 REHEAEINGS. 610 

A motion for a rehearing can not be entertained after the 
case adjudicated has been amended by the removal of one or 
more of the claims. 

Hoffman, 79 C. D. 247. 
Cases that pass on the subject matter of this rule. 
Atwood, 163 0. G. 1183; Bitner, 140 0. G. 356. 
Eehearings are not favored in any case, and only upon 
special circumstances. Motion for rehearing will not be 
entertained where there has been long delay in bringing it, 
Eehearings must be applied for within the limit of appeal. 
Messinger, 78 0. G. 1903, 1897 C. D. 1. 
A motion for a rehearing will not be entertained by the 
Commissioner for the purpose of enabling an applicant to 
make a further presentation of his case when there is no 
satisfactory showing, but that he might have done so in the 
first instance. 

Atley, 1892 C. D. 38, 58 0. G. 1091; Jerome, 1892 C. 
D. 29, 58 0. G. 945. 
A rejected application for a patent, pending on appeal in 
the Supreme Court of the District of Columbia, is not open 
to review by the Commissioner of Patents. 
Jerome, 1892 C. D. 29, 58 0. G. 945. 
Where a party misjudged his proper line of defense a new 
trial will not be granted on that account. 
Spielman, 1892 C. D. 1, 58 0. G. 141. 
A motion for rehearing ought to be governed, as far as 
practicable, by rules which in Courts govern new trials. 
Spielman, 1891 C. D. 162, 56 0. G. 1707. 
A case will not be reopened that has been decided by the 
Assistant Commissioner merely because the applicant wants 
a hearing by the Commissioner himself. 

Hughes, 891 C. D. 148, 56 0. G. 1448. 
Motions for rehearings by parties to an interference should 
be heard at one time. 

Green v. Hall v. Siemens v. Field, 1889 C. D. 156, 47 
0. G. 813. 
An applicant by appealing his case waives his right to move 
for a rehearing, even if the appeal is unauthorized. 
Gill V, Scott, 29 0. G. 949. 
A notice in the following words, "Limit of Appeal ten 
days,^' should be taken as ten days from the receipt of the 
notice. 

Pearson v. Lister v. Eeixach, 1883 C. D. 119, 24 0. G. 
1175. 



611 KEHEARINGS. Rule 140 

As I undersLand the decision of the Honorable, the Secre- 
tary of the Interior in the case of Manz v. Swab v. Cherry, 
dated February 34 and May 39, 1883, a motion for reopen- 
ing a case or for a new trial in this office is not to be deter- 
mined by the same rules which obtain in courts of law, and 
even if there was such laches as would . prevent a new trial 
at law, still if the new evidence is such as would change 
the result it should be admitted in a new trial. 

Eccard v. Drawbaiigh, 1883 C. D. 50, 34 0. G. 301. 
It is an established rule in the Office that a rehearing in 
a case will only be granted on such a showing of the merits 
as would entitle a mover to a new trial in a suit at law. 
Dod V. Cobb, 1876 C. D. 196; Hovey v. Muller, 1873 
C. D. 36; Pattee v. Eussell, 1873 C. D. 355; Marsh v. 
Dodge, 1876 C. D. 345; Wicks v. McAvoy, 1880 C. D. 
186; Spielman, 1891 C. D. 163, 56 0. G. 1707. 
A and B, application is in interference with C. C fails to 
comply with the rules of the office, and a patent is demanded 
by and granted to A and B by default. C proves to have 
been the prior inventor. A and B buys C^s rights. A re- 
hearing refused as all rights were lost by laches of C. 
Jones V. Greenleaf, 1879 C. D. 33, 15 0. G. 560. 
Wliere default is made a new trial will be more readily 
granted. 

Loring v. Hall, 1879 C. D. 8, 15 0. G. 471. 
A case will not be reopened on the ground of newly dis- 
covered evidence, when the matter constituting the new evi- 
dence is not affirmatively set out in the affidavits. 

Dodd V. Cobb, 1876 C. D. 196; Pattee, 1873 C. D. 355. 
The new evidence must be such as could not have been 
produced on the former trial. 

Merrill & Merrill v. Glidden, 1876 C. D. 343; Kenyon 
V. Wesson, 1871 C. D. 10; Pattee, 1873 C. D. 355; 
Huttner v. Knox, 1879 C. D. 381; Marsh v. Dodge, 
1873 C. D. 345. 
A case will not be reopened on the ground that the at- 
torney misunderstood the issue. 
i)od V. Cobb, 1876 C. D. 196. 
After the taking of testimony the case reopened to admit 
evidence tending to negative novelty. If the testimony had 
been of a different character it would not have been admitted. 
Wood V. Morris, 1897 C. D. 39. 
From the decision of the Examiner refusing to act appeal 
is directly to the Commissioner. A case should not be re- 



Eule 141 juBiSDicTioN. 612 

opened to admit evidence that could have been as well pro- 
duced at the former trial. 

Marsh v. Dodge, 1872 C. D. 345; Gillen, 1877 C. D. 

20, 11 0. G. P. 419. 

A rehearing ought never to be granted except upon the 

clearest showing that the petitioner has suffered injury by 

reason of defects in his case, which were unavoidable and 

for which he is not to blame. 

Mason Imlay, 1872 C. D. 183. 
Newly discovered evidence must be such as would neces- 
sarily change the result of the trial. 

Merrill & Merrill v. Glidden, 1876 C. D. 243; Hamilton 
v. Fisher, 1871 C. D. 271. 
An instance of a violation of this rule by the Board of 
Examiners-in-Chief. 
Strain, 1870 C. D. 75. 
Newly discovered evidence as to abandonment deemed suf- 
ficient to secure a new trial. 

Disston V. Emerson, 1870 C. D. 84. 
Cases that passes on the subject matter of this rule. 
McDonough v. Gray v. Bell v. Edison, 1889 C. D. 9, 46 
0. G. 1245. 

Rule 141. Jurisdiction. 

After decision by an appellate tribunal the case 
sball be remanded at once to the primary examiner, 
subject to the applicant's right of appeal, for such 
action as will carry into effect the decision, or for 
such further action as the applicant is entitled to 
demand. 

CONSTRUCTIONS. 

See notes to Eules 78, 100, 101, 123, 140, 146. 

Hereafter cases will be considered to be "pending before" 
the Examiner-in-Chief for the purpose of entertaining a mo- 
tion for rehearing until the expiration of the statutory or 
specified limit of appeal or until such appeal shall have been 
taken. 

Floyd, 129 0. G. 482. 

The Examiner of Interference has no jurisdiction to ex- 
tend the time for taking an appeal from a decision of the 
Examiners-in-Chief, even when the Board is not sitting. 
Townsend v. Eliret, 125 0. G. 2051. 



613 JURISDICTION. Kule 141 

The Primary Examiner has no authority to extend the 
limit of appeal from his decision upon motion brought after 
said limit has expired. 

Becker & Patitz v. Edwards, 123 0. G. 1990. 
Motions to restore jurisdictions. 

Hewitt V. Steinmetz, 122 0. G. 1395; Duryea & White 
V. Eice, Jr., 122 0. G. 1395. 
Upon a motion to restore the jurisdiction of the Examiner 
of Interferences in a case pending on appeal before the Ex- 
aminers-in-Chief, for the purpose of considering a motion 
to reopen the interference to take newly discovered evidence 
only a proper prima facie case is necessary the substance will 
be considered by the Examiner of Interferences. 
Dunbar v. Schellinger, 118 0. G. 2536. 
A motion to restore jurisdiction must be accompanied by 
a proper showing. 

Brunker v. Schweigerer, 1903 C. D. 189, 104 0. G. 2148. 
When limit of appeal has expired the tribunal before which 
the matter is pending has lost jurisdiction. The only way 
to restore it is by petition to the Commissioner. 

Benger v. Burson, 1900 C. D. 185, 93 0. G. 1917; 
Osborn v. Hotsapillar, 1901 C. D. 16, 94 .G. 583. 
Where a case was rejected on August 15, 1895, under Eule 
68, then in force, not on references, but on the ground that 
there had been intentional delay in prosecution, and such 
rejection made final under Eule 65, held, that as these rules 
have been revoked and there has been no final rejection on 
references, the action under Eule 65 is set aside and the 
case opened for reconsideration. 

Higgins, 1897 C. D. 73, 80 0. G. 2037. 
The Commissioner will not authorize the reopening of a 
case by the Primary Examiner, under Eule 142, in the ab- 
sence of good and sufficient reasons for long delay on the 
part of the applicant in presenting his reasons therefor, or 
a showing of great hardship or irreparable injury. 
Goldsmith, 1892 C. D. 41, 58 0. G. 1092. 
Cases that pass on the subject matter of this rule. 

Klepetko, 126 0. G. 387; Merrill, 116 0. G. 1186; Eeck- 
linffhausen & Potter. 113 0. G. 1146; Gilmer, 109 0. 
G."l337; Buck, 94 0. G. 222; Cutten & Eraser, 98 0. 
G. 2172; Grant, 93 0. G. 2532; McCallum v. Bremer, 
93 0. G. 1918. 



Rule 142 PETITION TO COMMISSIONERS. 614 

Rule 142. Petition to Commissioner, Without Fee. 

Upon receiving a petition stating concisely and 
clearly any proper question which has been twice 
acted upon by the examiner, and which does not in- 
volve the merits of the invention claimed, the rejec- 
tion of a claim or a requirement for division, and 
also stating the facts involved and the point or points 
to be reviewed, an order will be made directing the 
examiner to furnish a written statement of the 
grounds of his decision upon the matters averred 
within five days. The examiner shall at the time of 
making such statement furnish a copy thereof to the 
petitioner. No fee is required for such a petition. 
Hearing will be granted in the discretion of the Com- 
missioner. 

HISTORY. 

In the Eevision of the Eules of March 3, 1885, Eule 140 
read: 

Decisions of the Examiner upon preliminary or interme- 
diate questions, not involving the merits of the case, once 
repeated, will be re-examined by the Commissioner upon 
written statements of the points of appeal, and of the grounds 
of the Examiners' decisions, as in other appeals. For appeals 
of this class no fee is required. 

Commissioner Montgomery gave his reasons for the change 
of practice as follows : 

Washington, D. C, November 25, 1885. 
To the Patrons of the Patent Office: 

I desire to invite especial attention to the recent amend- 
ment to Eule 140 of the Eules of Practice of this Office. 

Before proposing this amendment I had thought the mat- 
ter over very carefully, and had come to the deliberate con- 
clusion that the subject of "interlocutory appeals" which ob- 
tained in this Office should be substantially corrected and a 
substitute therefore provided. 

In the first place, it is exceedingly difficult to understand 
how an appeal can be taken from no action at all. 

In the second place, it is many times next to impossible 



615 PETITION TO COMMISSIONER. Rule 142 

to ascertain the particular thing which is complained of, 
and — 

In the third place, the practice of permitting the Exam- 
iners to answer an appeal at any time before the hour of 
hearing, is not conducive to an intelligent examination of 
the questions involved. 

I have decided, therefore, to establish a little different prac- 
tice, which, it is to be hoped, will result in expediting all 
these matters, in more clearly presenting the questions, and 
in general benefit to the Office and its patrons. I have no 
doubt that every practitioner will agree that this is desirable. 

It will be observed that the rule, as amended, contemplates 
that instead of taking a loose appeal, a petition shall be filed 
reciting as definitely as possible what has been done and the 
particular grievance which is complained of, and asking 
specifically for the remedy which is desired. 

I suggest the following as an ordinary example of such a 
petition : 

Sixth. That your petitioner was then informed by Office 

letter of the day of 

that the former requirement relating to 

claim one would be adhered to, and that no action would be 
had on the merits of either claim until said amendment so 
required had been made; 

Wherefore your petitioner requests that the Examiner in 
charge of such application be advised that such amendment 
so required by him to said f^rst claim be not insisted upon, 
and directed to proceed to examine both said remaining . 
claims upon their merits. 

A hearing of this petition is desired on the 

day of 

, Applicant. 

, Attorney for Applicant. 

Of course, this example must be varied to suit the par- 
ticular facts of each case. It is not intended that a petition 
shall be required to contain a recital of all that has taken 
place since the filing of the application, but it would be well 
to state the date and the substance of the first action which 
is complained of, and which is sought to be reviewed, and 
thereafter to trace through, step by step, the things which 
were done both by applicant and the Office, which, in ap- 
plicant's opinion, makes it necessary for him to ask the relief. 

If any material facts are alleged in such petition which are 
not shown by the records or files of the ease, such petition 



Eule 142 PETITION TO COMMISSIONERS. 616 

slionld be verified. I suggest the following form of verifica- 
tion : 

State of ] 

\-ss: 

County of j 

On this day of 

, A. D. 1885, personally appeared before me, a, 

notary public in and for said county , 

the above-named petitioner, who, being by me duly sworn, 
says that he has heard said petition read and knows its con- 
tents, and that the same is true, except as to the matters 
therein alleged on information or belief, and as to those 
matters he believes it to be true. 



Notary Public. 

Upon receiving such petition an order will be made, as, 
follows : 

Eeferred to the Examiner in charge of Division 

, who is directed to file an answer on the 

day of , 

which answer shall exhibit the reasons, if any, why the re- 
quest of the petition hereto attached should not be granted. 



Commissioner. 

This answer will be required to be filed at least five days 
before the day of hearing, which day of hearing will be, 
when consistent, the one named by the petitioner. 

I am also considering the subject of requiring copies of 
all such answers to be furnished to appellants, the same as 
copies of all other communications. This, however, will be 
determined hereafter. 

CONSTRUCTIONS. 

(1) Miscellaneous. 

(2) Petition. 

(3) Executive Questions. 

(4) Two Eejections. 

(5) Eefusal of the Examiner to Act. 

( 6 ) Vagueness. 

(7) Interferences. 

(8) Additional Cases, 

(1) Miscellaneous. 

A question involving the wording and not the substance 
of a claim is reviewable on petition. 
Owen, 195 0. G. 1049. 



617 petitiojst to commissioner. Rule 142 

Abandonment of application reviewable on petitions. 

Mygatt, 184 0. G. 802. 
A refusal of the Examiners to permit an amendment of 
the drawing is reviewable on petition where the question is 
what the disclosure is and not whether it is operative. 
Bogvoslawsky, 179 0. G. 1107. 
As the points relied upon by the petitioner are technical, 
it is necessary to call attention to the fact that the rule re- 
quires two actions by the Primary Examiners. 
Frelisch, 173 0. G. 864. 
A petition and complaint at the same time improper. 

Eggan, 172 0. G. 1091. 
Whether or not a ruling that the year begins to run at 
a certain date is correct or not will not be considered until 
the application is held to have been abandoned unless the 
error is clear. 

Inman, 160 0. G. 1038 (149 0. G. 309). 
Matter of sufficiency of time allowed to make claims under 
Eule 96 considered by the Commissioner. 
Hillmunch, 141 0. G. 565. 
It seems a petition will lie to direct the Primary Examiner 
to allow a claim that has been previously allowed on a pre- 
vious application and on a renewal of the same. 
Hav, 139 0. G. 197. 
Sufficiency of affidavit under Eule 75 is not reviewable on 
petition. 

Nordstrom, 115 0. G. 1327. 
Questions of division are not reviewable by petition. 

Emerson, 109 0. G. 1610. 
Questions of new matter go directly to the Commissioner, 

Edwards, 108 0. G. 1056. 
The question of operativeness of invention may not be 
considered by the Commissioner under this rule. 
Brisbane, 107 0. G. 1097. 
Eefusal to register a trade-mark on the grounds that the 
label showed a misunderstanding not reviewable on petition. 
Zinn, 107 0. G. 703. 
It is not in . accordance with good practice to present a 
matter for consideration on appeal which has not been con- 
sidered and passed upon by the tribunal below. 
Eenpeto v. Stephens, 105 0. G. 1779. 
The case presented to the Commissioner must be that 
presented to the Examiner. 

McHarg v. Schmidt & Mayland, 105 0. G. 263. 



Rule 142 PETITION TO COMMISSIONERS. 618 

Seems to be approved by C. of A. D, of C. 

lJ. S. ex rei. Steinmetz v. Allen Com., 104 0. G. 853-6. 
The question as to the propriety of disclosing records of 
the office is one properly reviewed on petition. 

Eobinson v. Copeland, 102 0. G. 466 et req. 
An appeal was taken both to the Commission and Board. 
The Commissioner decided the case a second time on appeal 
from the board. 

101 0. G. 2825. 
There is no more excuse for loose practice under this rule 
than there is for improperly prepared pleadings in court 
cases. 

Grant, 1900 C. D. 199, 93 0. G. 2532. 
The case must be twice acted upon. 

Haug, 97 0. G. 192. . 
Proper subject matter for a design patent not a proper 
subject matter of petition. 
Groves, 89 0. G. 1671. 
Where a question of aggregation and unity and diversity 
of investion arise, the first question must be settled before 
petitioning the commissioner on the latter. 
Feucht, 88 0. G. 2066. 
The Commissioner will not consider an appeal taken from 
the action of an Examiner rejecting an application, 
Kuhn, 1892 C. D. 46, 58 0. G. 1250. 
The question of redundancy or multiplicity of claims is 
one of form and not one involving the merits, hence the 
proper remedy is by petition. 

Lawn, 1891 C. D. 44, 54 0. G. 1561. 
If the Examiner refused to receive a claim presented in an 
amendment because it is a departure from the original in- 
vention an appeal lies to the Commissioner. 
Bennett, 35 0. G. 1004. 
Prom a refusal by the Examiner to receive an amendment 
■for the reason that it is a departure from the invention 
originally disclosed, an appeal lies directly to the Commis- 
sioner. In what cases an Examiner should refuse to receive 
an amendment for this reason. Bennett, 35 0. G. 1003. 
See Barker v. Mack, 1873 C. D. 123. 

When a case is appealed to the Commissioner the entire 
case is before him and is subject to review. 
Blythe, 30 0. G. 1321. 
Where the reasons for requiring a division are given with 
clearness, his action will not be reviewed upon petition upon 
the allegation that the reasons given by him are insufficient. 
Wallace, 18 0. G. 1686. 



619 PETITION TO COMMISSIONER. Rule 142 

As to the form of claims. 
Williams, 1876 C. D. 227. 

There is no limit of time prescribed either by the law or 
rules within which an appeal shall be taken on interlocutory 
matters. 

Little V. Little, Pillarcl and Sargent, 1876 C. D. 207. 

(2) Petition. 

B has appealed, but in his assignment of error does not 
challenge the decision of the Commission on the question of 
priority of invention and to this extent he is presumed to 
have acquiesced in the decision against him. 

Bechman v. Wood, 15 App. D. C. 487; Bechman v. 
Southgate, 127 0. G. 1254. 
The first paragraph of the petition is not a request for 
specific relief, but is in the nature of a complaint. It does 
not ask that the Examiner's action be set aside or overruled. 
It has therefore no proper place in a petition. 
Lewis, 109 0. G. 559. 
Questions involving the merits of invention are appealable 
in the first instance to the Examiners-in-Chief. A petition 
must state the facts involved and the point or points to be 
reviewed. 

Organ, 100 0. G. 231. 

(3) Executive Question. 

Eemedy by petition applies only where the Examiner has 
been requested to take a particular action and refused to do 
so after the reasons have been fully stated and considered. 
Lewis, 109 0. G. 560. 
The question whether a claim has been reasonably pre- 
sented is an executive one. 

Perkins, 189 C. D. 63, 55 0. G. 139. 
If there is a disagreement between an Examiner and an 
applicant as to whether an amendment is a matter of sub- 
stance, an interlocutory appeal lies to the Commissioner who 
will determine on such appeal not whether references which 
may have been cited meet or do not meet the case, but 
whether as a matter of language the amended claim presents 
the same idea or invention as the old ones. 
Winchester, 1880 C. D. 92. 
The only appeal from the executive action of the Exam- 
iner is the Commissioner in person. 
Morton, 1871 C. D. 169. 



Rule 142 PETITION TO COMMISSIONERS. 620 

(4) Two Rejections. 

The practice prescribed (requiring two actions by the 
Primary Examiner) should be strictly followed. 
Lendl, 115 0. G. 250; Shone, 99 0. G. 863. 
Case dismissed as the question of division. It had not 
been twice acted upon. 

Lovejoy, 108 0. G. 1053. 
Two actions by the Primary Examiner are essentially pre- 
requisite. 

Shone, 99 0. G. 863, 100 0. G. 231-3; Lovejoy, 108 0. 
G. 1053. 
Until there is an issue between the Examiner and appli- 
cant the right of petition does not ordinarily exist. 
104 0. G. 1119. 
There is a principle governing the regulations of Eule 145, 
that two actions should be made by the Examiner before a 
petition can be brought and this principle is that the issue 
between the Examiner and the applicant shall be well de- 
fined before a review of the requirement of the Examiner 
is asked for by the applicant. The practice of pro formal 
actions condemned. 

Tyson, 101 0. G. 3105-06; Amand, 103 0. G. 661. 
The practice of carrying up questions before they have 
been carefully considered by the Primary Examiner con- 
demned. The Examiner can not be expected to answer mat- 
ter brought up for the first time in the argument. 
Amand, 103 0. G. 661. 
Two actions by Primary Examiner necessary. 
Auchn, 1892 C. D. 120, 59 0. G. 1761'. 

(5) Refusal of Examiner to Act. 

If the applicant is not convinced by the reasons given by 
the Examiner, he should apparently appeal and can not com- 
pel further reasons by petition. 
Leilich, 108 0. G. 561. 
Eefusal to act because case is res adjodicata may be re- 
viewed under this rule. 
100 0. G. 2775-6. 
A petition asking that the Primary Examiner be directed 
to reconsider the claims will not be considered in the ab- 
sence of any allegation that the final rejection was prema- 
ture, the request apparently being made because applicant 
thought the Examiner was in error in rejecting the claims. 
Eickelberg, 100 0. G. 2773. 



621 PETITION TO COMMISSIONER. Rule 142 

All interlocutory apiDeal lies from a refusal of the Ex- 
aminer to consider the merits of the claims as amended. 
Hoffman, 1880 C. D. 247. 
The question appealed is, however, whether the amendment 
shall be received or not, and the Examiner may reject the 
case for containing matter not warranted by the original 
papers after he has been directed by the Commissioner to 
receive the amendment. 

Vaile, 37 0. G. 563; Bennett, 35 0. G. 1004. 
Appeal lies to the Commissioner in person if the Examiner 
for anv reason declines to examine the case upon it^ merits. 
Barker & Mack, 73 C. D. 123; Bennett, 35 0. G. 1003. 
An appeal from the Examiner's decision refusing to act 
upon an application for a design patent because the subject 
matter was the subject of a mechanical patent, appealable to 
the Commissioner ditect and not to the Examiners-in-Chief, 
Practice changed, see Notes to Eule 133. 
Morton, 1871 C. D. 169. 
The Commissioner should not be called upon to instruct 
an Examiner until the case is properly before him on appeal. 
Sellers, 1897 C. D. 164, 81 0. G. 803. 
It is contrary to settled practice to remand a case for the 
decision and at the same time direct the lower tribunal how 
to decide it. 

E V. C, 102 0. G. 466. 

(6) Vagueness. 

Objections that a claim is indefinite and that claims are 
substantially identical reviewable on petition. 
Eastman, 1891 C. D. 178, 57 0. G. 410. 
An appeal from the Examiner's decision, that the claim 
is vague and depends for its novelty entirely upon a device 
described only by its function, is to the Commissioner. 
Doten, 1877 C. D. 115. 
An appeal as to the clearness and fulness of the specifica- 
tion is to the Commissioner. 
Gould, 1876 C. D. 164. 

(7) Interferences. 

Before the interference proceeds further it should be posi- 
tively determined whether or not these new references antici- 
pate the issue. 

Wright & Stebbins v. Hansen, 114 0. G. 761. 

It is eminently improper to encumber the records of an 



Rule 143 EEMEDY BY APPEAL. 622 

interference with irrelevant matter as to the conduct of some 
particular officer or employee of the Department. 
Duryea & White v. Eice, 114 0. G. 761. 

Questions of interference in fact appealable to Commis- 
sioner and not to Board apparently. 
Hein v. Shepard, 106 0. G. 2062. 

A mere request by a party having an application on file is 
not sufficient to warrant ruling upon questions of procedure 
and practice in which he happens to be interested. The time 
to bring up such questions is after an adverse decision has 
been rendered upon them. 

Hicks V. Costello, 103 0. G. 1163. 

An appeal from the decision of the Examiner of Interfer- 
ences dissolving an interference is to the Commissioner in 
person. 

Marsh v. Dodge, 72 C. D. 245. " 

(8) Additional Cases. 

Cases that pass on the subject matter of this rule. 

Kaczander v. Hodges & Hodges, 118 0. G. 836; Lay, 
107 0. G. 2237; Blackman v. Alexander, 1900 C. D. 
186, 105 0. G. 2058; McCallum v. Brenner, 1900 C. 
D. 186, 93 0. G. 1917; Prasch, 100 0. G. 1967; Os- 
borne, 92 0. G. 1797; Johnson, 89 0. G. 1341; Shear- 
man, 1898 C. D. 190; Suter, 1892 C. D. 112, 59 0. 
G. 1431. 

APPEALS TO THE EXAMINERS-IN-CHIEF AND TO 
THE COMMISSIONER IN CONTESTED CASES. 

Rule 143. Remedy by Appeal. 

In interference cases parties have the same remedy 
by appeal to the examiners in chief and to the Com- 
missioner as in ex parte cases. 

Eev. Stat., sees. 4904, 4909, 4910, 4911. 
CONSTRUCTIONS. 

The distinction between the two classes of appeals is rec- 
ognized in the Rules of Practice. Rule 133 prescribes the 
conditions for Appeals from the Primary Examiner while 
Rule 146 provides for appeals in interference cases. 
Cheney v. Venn, 125 0. G. 1703. 



623 REMEDY BY APPEAL. Rule 143 

The question of patentability is not generally open in an 
appeal in interference cases. 

Orcutt V. McDonald, Jr., and McDonald, 123 0. G. 1288; 

Wenzelmann & Overholt, 113 0. G. 995. 
D. on the face of the record has no substantial standing 
in the interference, and H. identified with D. in interest 
should not be permitted to prolong the extensive delay which 
has already occurred on account of D.'s unwarranted appeal. 
Dalton V. Hopkins v. Newman, 120 0. G. 906. 
The question of right to make claims is different from that 
of interference in fact and will not be considered on appeal 
for the former reason. 

Blackmore v. Hall, 119 0. G. 2523; Heintzelman & Co. 

V. Yraalstad & Doyle, 120 0. G. 906. 

It is well settled that this court can not and should not 

interfere with such (interlocutory) rulings, unless perhaps, 

in extreme cases it should be necessary for the maintenance 

of the jurisdiction of this court. 

Ritter v. Krakaw & Connor, Jr., 114 0. G. 1553-1554. 
There is no appeal from a decision refusing a rehearing. 

Carmichael v. Fox, 104 0. G. 1656. 
Court of Appeals regards it as improper for them to adju- 
dicate the question of priority before the question of patent- 
ability is fully settled. 

Slaughter v. Halle, 102 0. G. 469. 
Decisions (concurrent) of Office will be adhered to unless 
in a clear case. 

Howard v. Hey, 95 0. G. 1647. 
Appeal on question of Priority, Decision of Office, as to 
whether or not invention is shown by one applicant will be 
taken as conclusive. 

Ostergren v. Tripler, 95 0. G. 837; Schupphaus v. 
Stevens, 95 0. G. 1452. 
In general questions of patentability will not be considered 
on appeal. Explains Bachmeyer v. Wood, 89 0. G. 2459. 
Newton v. Woodward, 93 0. G. 2320; Latham v. Armat, 
9-; 0. G. 232. 
Application of rule. 

Brown v. La Dow, 80 C. D. 199; Adams v. Murphy, 91 
0. G. 2207. 
As the motion involves the question as to what constitutes 
proper evidence in a certain case, and is not one of merely 
office practice, it is a matter on which the Board of Appeals 
should be allowed to also express an opinion, especially in 
view of the fact that the Examiner of Interferences has 



Eule 144 BRIEFS IN APPEAL. 624 

passed upon the point in rendering a final decision upon the 
question of priority. 

Chambers v. Duncan, 1876 C. D. 82, 223. 
An appeal from the decision of the Examiner of Inter- 
ferences 'dissolving an interference is to the Commissioner 
in person. , 

Marsh v. Dodge, 1872 C. D. 245. 

Rule 144. Briefs in Appealed Cases. 

Appeals in interference cases must be accompanied 
by brief statements of the reasons therefor. Parties 
will be required to file six copies of printed briefs of 
their arguments, the appellant ten days before the 
hearing and the appellee three days. (See Rule 163.) 

CONSTRUCTIONS. 

All briefs should have conspicuously printed thereon a 
statement designating the particular tribunal of the Patent 
Oflfiee to which the brifef is addressed. 
(Order), 218 0. G. 607. 
U. S. Statutes excusing the printing of record, etc., in case 
of poverty does not apply to these appeals. 

In re Mattulath Adam, etc., 173 0. G. 1082. 
A brief filed after oral argument and near the close of 
the hearing admitted. If counsel for P. wished to file a 
reply-brief he should have requested permission of the 
Primary Examiner to do so, when the brief of Stevens was 
filed, and it was within the discretion of the Examiner to 
grant such a request. 

Stevens v. Paterson, 142 0. G. 568. See note to Eule 
163. 
One brief. Supplementary brief after hearing not ad- 
missible. 

Newcomb v. Lenmp, 109 0. G. 2171. 

Rule 145. Right to Open and Close. 

The appellant shall have the right to make the 
opening and closing arguments, unless it shall be 
otherwise ordered by the tribunal having jurisdiction 
of the case. 



625 APPEAL TO THE COURT. Eule 148 

Rule 146. Jurisdiction. 

Contested cases will be regarded as pending before 
a tribunal nntil the limit of appeal, which mnst be 
fixed; has expired, or until some action has been had 
which waives the appeal or carries into effect the 
decision from which appeal might have been taken. 

See Rules 140, 141, 123, 100, 101. 

RECONSIDERATION OF CASES DECIDED BY 
FORMER COMMISSIONER. 

Rule 147. Reconsiderations and New Trials. 

Cases which have been decided by one Commis- 
sioner will not be reconsidered by his successor ex- 
cept in accordance with the principles which govern 
the granting of new trials. 

CONSTRUCTIONS. 

Cases decided by former Commissioner will not be heard. 
Manifest error in law, being ground for a new trial, is 
also ground for a rehearing imder Rule 144. 

Green v. Hall v. Siemens v. Field, 1889 C. D. 161, 47 
0. G. 1631. 

History reviewed. 

Dainels V. Morgan, 1889 C. D. 150, 47 0. G. 811; Mc- 
Donough V. Gray v. Bell v. Edison, 1889 C. D. 9, 45 
0. G. 1245; McDonough v. Gray v. Bell v. Edison, 
1889 C. D. 9, 46 0. G. 1245; Nealson, 1897 CD. 
174, 81 0. G. 1787. 
Except upon a new state of facts or upon grounds which 
would support a motion for a new trial. 

Lee V. Walsh, 79 C. D. 29 ; Huttner v. Knox, 1879 C. D. 
281; J. L. Mason, 1870 C. D. 20. 

APPEALS OF THE COURT OF APPEALS OF THE 
DISTRICT OF COLUMBIA. 

Rule 148. Appeal to Court. 

From the adverse decision of the Commissioner 
upon the claims of an application and in interference 



Eule 148 APPEAL TO THE COURT. 626 

cases, an appeal may be taken to the Court of Appeals 
of the District of Columbia in the manner prescribed 
by the rules of that court. (See appendix.) 

Eev. Stat., sec. 4911; sec. 9, act of February 9, 1893. 

HISTORY. 

The "Act to establish a Court of Appeals for the District 
of Columbia, and for other purposes," approved February 9, 
1893 (27 Stats. 434, 436, ch. 74), as to Section 9, reads as 
follows ; 

Sec. 9. That the determination of appeals from the deci- 
sion of the Commissioner of Patents, now vested in the 
General Term of the Supreme Court of the District of Co- 
lumbia, in pursuance of the provisions of section seven hun- 
dred and eight of the Eevised Statutes of the United States, 
relating to the District of Columbia, shall hereafter be and 
the same is hereby vested in the Court of Appeals created 
by this act; and in addition, any party aggrieved by a 
decision of the Comissioner of Patents in any interference 
case may appeal therefrom to said Court of Appeals. 

This act was held constitutional in United States ex rel. 
Bernardin v. Duall, Commissioner of Patents, 86 0. G. 995. 

The word "interference" in section 9 of the act establish- 
ing the Court of Appeals of the District of Columbia inter- 
preted and held not to mean and include disputes in trade- 
marks under section 3 of the Trade-Mark law of 1881, but 
to be confined to an interference in patent law. 
Einstein v. Sawhill, 65 0. G. 1918. 



(1 
(2 
(3 
(4 
(5 
(6 
(7 
(8 
(9 



CONSTRUCTIONS. 
Jurisdiction. 
Appeal. 

Final Decisions of Commissioner. 
Motions. 
Eecord. 

EULES. 

Weight Given Commissioner's Decisions. 

Mandamus. 

Effect or Decision of the Court on Commissioner. 



(10) Miscellaneous. 



627 APPEAL TO THE COURT. Rule 148 

(1) Jurisdiction. 

We have no more jurisdiction to question the patentability 
of the counts in an interference proceeding than in an ex 
parte proceeding. 

Seewellyyn v. Upson, 227 0. G. 367. 
The jurisdiction of the Court of Appeals of the District of 
Columbia to entertain appeals from the decisions of the Com- 
missioner of Patents in proceedings relating to patents is 
limited to two classes — (1) Where the claims of an applica- 
tion for a patent or the reissue of a patent after having 
been twice rejected have been finally rejected on appeal to' 
the Com_missioner in due course of proceeding. (2) Where 
on an appal to the Commissioner in an interference proceed- 
ing there has been a final decision on priority in favor of one 
of the parties thereto. (E. S. Sees. 4909, 4910, 4911.) 

Westinghouse v. Duncan, 2 App. D. C. 8, 17, 26; Union 
Distilling Co. v. Schneider, 29 App. D. C. 1 ; In re 
Fullager, 138 0. G. 259. 
The Court of Appeals of the District of Columbia has no 
jurisdiction to entertain an appeal from a decision of the 
Commissioner of Patents on a motion to dissolve an inter- 
ference between an appellant for reissue and an original ap- 
plication holding that appellant had no right to a reissue on 
the ground that his showing of inadvertence, accident, or 
mistake was insufficient and that he had failed to excuse the 
long delay of more than two years in filing the reissue 
application, as such judgment does not constitute an adju- 
dication of the question of priority between the parties. 
In re Pullagar, 138 0. G. 259. 
The Court has jurisdiction of appeals from the Commis- 
sioner of Patents in certain matters defined by statute, but 
has no original jurisdiction to direct and supervise the ad- 
ministration of the affairs of the Patent Office. A petition 
to direct the Commissioner to allow petitioner to proceed 
with the taking of testimony refused. 

DeFerranti v. Lindmark, 137 0. G. 733; Neill v. Com- 
missioner of Patents, 82 0. G. 749. 
The Act establishing the Court of Appeals did not by 
implication repeal the Statute providing remedy by bill in 
equity in a circuit court. 

Bernardin v. Vorthall and Seymour, Commissioner of 
Patents, 78 0. G. 1740. 
The statutes given right of appeal only in cases where the 
various tribunals of the Office have acted. 
Serrell v. Donnelly, 129 0. G. 2501. 



Rule 148 APPEAL TO THE COUET. 628 

(2) Appeal. 
Whether the patent was properly granted in view of the 
state of the art can not be considered in the Court of Ap- 
peals. 

Lantenschlager v. Glass, 249 0. G.. 1223-1224. 
Where upon appeal, on a motion to dissolve, the Commis- 
sioner held that C., the junior party, had no right to make 
the claims because of an inoperative disclosure, and there- 
after, at C.'s request, changed the order from one of disso- 
lution to one awarding priority to G., an appeal was taken 
to the court : Held, that a motion to dissolve is interlocu- 
tory and the Commissioner is without authority to convert an 
appeal on such a motion into an appeal on priority. 

Caspor V. Gold, 34 App. D. C. 194, and 36 App. D. C. 

302, cited by the Commissioner, distinguished. 
Carlin v. Goldberg, 236 0. G. 1222. 
Patentability considered in an interference suit even if 
evidence was taken before the Patent Office. 
Slingfuff V. Sweet, 230 0. G. 659. 
Appeal lies to the Court of Appeals from an exercise of 
the supervisory power of the Commissioner rejecting a claim, 
Moore Com. v. IJ. S. ex rel. Chott, 192 0. G. 520. 
Apparently there is no appeal from a decision dissolving 
an interference under Eule 122, because it is not a final deci- 
sion, nevertheless if the motion is made to change the deci- 
sion to a final action, as to priority it may be appealed from, 
U. S. ex rel. Scott et al. v. Moore, Com., 180 0. G. 
607; (Cooper v. Gold, 36 App. D. C. 302-307). 
A motion by E. that he be made a party to an appeal to 
the Court of Appeals of the District of Columbia taken by 
P. from a decision of the Commissioner of Patents on a 
motion to dissolve holding that F. had no right to make the 
claims of the issue because of his delay in filing his reissue 
application involved in this interference denied on the 
ground that the Commissioner's decision did not result in 
award of priority to E., and therefore P. could not bring him 
before the Court by an appeal. Por the same reasons E.'s 
motions to have the docj^et entry changed and to dismiss P.'s 
appeal denied. 

In re Pullagar, 138 0. G. 259. 
Where an interference is declared between three parties and 
all present testified and but one of the parties takes an appeal 
to the Court of Appeals, the case made out by the party who 
has not appealed can not be considered in the determination 
of the controversy. 

Richard v, Meissner, 114 0. G. 1831. 



629 APPEAL TO THE COURT. Rule 148 

(Interference) the argument of Porter's counsel have failed 
to satisfy us that the case before us is one of those extraor- 
dinary cases in which the court may be called upon to in- 
quire whether there is a patentable invention involved. 
Potter V. Mcintosh, 137 0. G, 1995. 

(3) Final Decisions of Commissioner. 

Up to the present time the Court of Appeals has enter- 
tained appeals in interference cases only from the final deci- 
sion of the Commissioner upon the question of priority of 
invention. (Allen, Commissioner of Patents, v. The United 
States of America ex rel Lowry and Planter Compress Co., 
116 0. G. 3253.) 

DeFerranti v. Lindmark, 137 0. G. 731; Marshutz v. 
Commissioner of Patents, 85 0. G. 778. 
The statutes give right of appeal only in cases where the 
various tribunals of the Office acted and not when the Exam- 
iners-in-Chief suggest that, the issue is not patentable. 
Serrell v. Donnelly, 139 0. G. 3501. 
Neither the rules of this Court, nor of the Patent Office, 
mention amendments to the reasons of appeal; but when 
made in due time, to correct an assignment that may not be 
sufficiently specific, or some inadvertance in its preparation, 
and no possible injury could be done to the opposing party, 
we see no reason why it should not be permitted. 
Horine v. Wende, 139 0. G. 3858. 
The discretion of the Commissioner, in extending time for 
filing preliminary statement not reviewed by Court of Ap- 
peals. 

Churchill v. Goodwin, 141 0. G. 569. 
In general, the question of patentability is not open in an 
appeal in interference cases. 

Hisey v. Peter, 71 0. G. 893; Doyle v. McEoberts, 79 
0. G. 1039; Orcutt v. McDonald, Jr., and McDonald, 
133 0. G. 1288; Newton v. Woodward, 93 0. G. 3330 
(explaining Bechman v. Wood, 89 0. G. 3330) ; La- 
tham v. Armat, 95 0. G. 333. (See subject "Patent- 
ability" in section 6.) Potter v. Mcintosh, 137 0. G. 
1995; Mill v. Midgley, 136 0. G. 1534; Luger v. 
Browning, 104 0. G. 113. (Distinguishing from 
Oliver v. Felbel, 100 0. G. 3384.) Dodge v. Fowler, 
83 0. G. 595; Doyle v. McRoberts, 79 0. G. 1539. 
The Court of Appeals regards it as improper for them to 
adjudicate the question of priority before the question of 
patentability is fully settled. 

Slaughter v. Halle, 102 0. G. 469. 



Rule 148 APPEAL, TO THE COUET. 630 

It is well settled that this Court can not and should not 
interfere with such (interlocutory) rulings, unless perhaps 
in extreme cases it should be necessary for the maintenance 
of the jurisdiction of this Court. 

Eitter v. Krakaw & Connor, Jr., 114 0. G. 1553-1554. 
The reopening of a case for the introduction of newly dis- 
covered evidence is a matter of discretion for the trial court, 
and will not be reviewed by this Court. 

Eichards v. Meissner, 114 0. G. 1831; Dunbar v. Schel- 
lenger, 128 0. G. 2837; Omes v. Starr, 117 0. G. 1495. 
The decision was an interlocutory one relating to the gen- 
eral practice of the Office (Eules 30, 31, 75) in all such 
cases, and the question of its propriety as presented, is not 
necessarily involved in the decision on its merits. For the 
reasons given it is not the subject of review. 

Westinghouse v. Duncan, 66 0. G. 1009; Mill, 11 App. 

D. C. 584, 588; Frasch, 100 0. G. 1977, 192 U. S. 

566; Davis v. Garrett, 123 0. G. 1991; Hulett v. 

Long, 89 0. G. 1141. 

The question whether the description in a design case is 

a proper one is not reviewable by the Court of Appeals except 

in an extraordinary case. 

Mygatt, 121 0. G. 1676. 
A trade-mark interference declared under the act of 1881 
but not decided until after the passage of the act of February 
20, 1905, is appealable to the Court of Appeals of the Dis- 
trict of Columbia under the act of February 20, 1905, where 
the only application involved has been amended to bring it 
under the provision of that act. 

Giles Eemedy Company v. Giles, 120 0. G. 826. 
. A decision against a party on the ground that his original 
application did not contain the inventions seems to be one 
of priority of invention and the decision should be such as 
to give the unsuccessful party opportunity to take an appeal 
in the interference to the Court of Appeals and not one dis- 
solving the ' interference. 

Pohle V. McKnight, 119 0. G. 2519. 
Question of the identity of the inventions involved proper 
to be considered by the Court of Appeals on appeal from the 
final decision of the Commissioner. 

Bechman v. Wood, 89 0. G. 2459 ; but see Bechman v. 
Wood, 89 0. G. 2462. 
It is only by regarding the proceedings in the Patent Office 
as quasi-judicial in their nature that the validity of the leg- 



631 APPEAL TO THE COURT. Rule 148 

islation which authorizes appeals to the Court of Appeals 
from the decision of the Commissioner of Patents can be sus'^ 
tained. 

Barratt v. Duall, Commissioner of Patents, 87 0. G. 
1075. 
A refusal to consider patentability in cases of priority does 
not establish the conclusion that the decision of the Commis- 
sioner upon questions of patentability in such cases is final 
and conclusive. Such questions should come before the Court 
by regular course of appeal. 

Breul V. Smith, 79 0. G. 153. 
The right of a party to make a claim will be considered 
as an ancillary question to be considered in awarding priority 
of invention. 

United States of America ex rel. The ISTewcomb Motor 
Company v. Moore Co., 133 0. G. 1680. 
The Court will confine its decision to the matter passed 
upon by the Commissioner and not consider the question of 
abandonment, prior public cases, and anticipation of the in- 
vention which have not been acted on in the Patent Office. 
Colhoun V. Hodgson, 70 0. G. 276; Cutler v. Leonard, 
136 0. G. 438. 
Whatever practice should have been pursued in regard to 
the additional claim presented for the first time to the Com- 
missioner in person which was neither considered nor re- 
jected, we do not consider that we are at liberty to pass upon 
it on this appeal. 

Garrett, 122 0. G. 1047. 
Only claims considered by the Office will be considered by 
the Court on appeal. As to bill in equity see Durhamy v. 
Seymour, Commissioner of Patents, 71 0. G. 601, and the 
construction given bv the Office adhered to. 
Breul V. Smith, "78 0. G. 1906. 
The right of appeal in case of the refusal of a patent upon 
the ground of non-patentability of the claim, and refusal of 
• a patent because of interference with a prior right of inven- 
tion, are distinct rights. The latter does not involve the 
former This is clearly indicated in the Revised Statutes of 
the United States, section 4911, and in section 9 of the act 
of Congress of February 9, 1893, providing for the organiza- 
tion of this Court. 

Hisey v. Peters, 71 0. G. 892. 
The Court will not consider the question of patentability 



Kule 148 APPEAL TO THE COUKT. 632 

a second time in a new application for the same subject 
matter. 

Barratt v. Duall, Commissioner of Patents, 87 0. G. 
1075. 
Only appeals from final decisions considered. 

Cross V. Phillips, 87 0. G. 1399; Hulett v. Long, 89 
0. Gr. 1141; Westinghouse, Jr., v. Duncan, 66 0, G. 
1009. 

(4) Motions. 

A motion to dismiss an appeal on the ground that it was 
taken in bad faith for the purpose of delay will not be post- 
poned to the final hearing if a prima facie case is made out. 
Jones V. Starr, 117 0. G. 1495. 
The appellant having failed to have his cause filed and 
docketed, on motion of the appellee the cause was docketed 
and dismissed. 

Cleveland v. Wright, 79 0. G. 886; Southall v. Seymour, 

Com., 79 0. G. 1684; McCreary v. Seymour, Com., 79 

0. G. 1684; Morrissey v. Seymour, Com., 79 0. G. 

1684. 

Court will entertain a motion for a new trial pending an 

appeal. 

Clement v. Eichards v. Meissner, 111 0. G. 1627. 
No appeal from orders refusing a new trial or rehearing. 
Greenwood v. Dover, 109 Ck G. 2172; Messinger v. Com- 
missioner of Patents, 83 0. G. 1995. 

(5) Record. 

Confined to the record made up in the Office. 

Heroult, 127 0. G. 3217. 
Failure to print transcript of record is ground under Court 
Eule for dismissing appeal. 

Munson v. Carper, 79 0. G. 160; Pelton v. Evered, 77 
0. G. 16. 
The record of the proceedings in the Patent Office upon 
being filed with the clerk of the Court of Appeals become a 
public record. 

Drawbaugh, 66 0. G. 1451. 

(6) Rules. 

The Court of Appeals was duly authorized by statute to 
make rules limiting the time of appeal from the decisions of 
the Commissioner of Patents. 
77 0. G. 507. 

See "Rules," page 783, and Instructions to Applicants, 
page 790. 



633 APPEAL TO THE COURT. Rule 148 

(7) Weiglit Given Commissioner s Decisions. 

Three tribunals of the Office concurring a different con- 
clusion will only be reached where there is manifest error. 
Creveling v. Jepsou, 256 0. G. 226. 

ON QUESTIONS OF FACT THE CONCURRENT DE- 
CISION^ OF THE LOWER TRIBUNALS WILL 
BE TAKEN AS CONCLUSIVE, UNLESS 
THE CONTRARY IS CLEAR. 

Arnold v. Tyler, 79 0. G. 156; Hisey v. Peters, 71 0. 
G. 892 ; Hien v. Buhoup, 81 0. G. 2088 ; Ball v. Flora, 
121 0. G. 2668; O'Connell v. Schmidt, 122 0. G. 
2065; Park v. Lewis, 0. G. 2313; Ostergren v. Trip- 
ler, 95 0. G. 837; Schiipphaus v. Stevens, 95 0. G. 
1452; Austin v. Johnson, 95 0. G. 2685; Kilbourn v. 
Hirner, 128 0. G. 1689; Orcutt v. McDonald, Jr., 
and McDonald, 23 0. G. 1287; Eies v. Kirkgaurd and 
Jehsen, 132 0. G. 845; Baur v. Crone, 120 0. G. 
1824; Bourn v. Hill, Jr., 123 0. G. 1284; Bechman 
V. Southgate, 127 0. G. 1254; Herman v. Pullman, 
109 0. G. 1888. But see Beals v. Pinkerhiner, 82 0. 
G. 598; Eitter v. Krakaw and Connor, Jr., 114 0. G. 
1553; Eosell v. Allen, 92 0. G. 1036; Stone v. Pupin, 
100 0. G. 114; Duryea and White v. Eice, Jr., 126 
G. 1357; Murphy v. Meissner, 114 0. G. 592; 
' Cleveland v. Wilkins, 123 0. G. 1286 ; Weber v. Barrv, 
Jr., 117 0. G. 1494; Seeberger v. Dodge, 114 0. G. 
2382; Beswick v. Commissioner, 91 0. G. 1437; 
Latham v. Armat, 95 0. G. 232 ; Munster v. Ashworth, 
28 0. G. 2088; Clunies, 123 0. G. 2361; Adams, 114 
0. G. 2093; Dunbar v. Schellenger, 128 0. G. 2837; 
Clenn v. Adams, 83 0. G. 158; Howard v. Hey, 95 
0. G. 1647; Flora v. Powrie, 109 0. G. 2668; Esty 
V. Newton, 86 0. G. 799; Munster v. Ashworth, 128 
0. G. 2088; Eichards v. Burkholcler, 128 0. G. 2533; 
Wickers and Furlong v. McKee, 129 0. G. 869. 
The rule that the concurrent decisions of the Office as to 

facts will be followed, except in a clear case, does not mean 

that the Court will be bound by the conclusions from such 

facts. 

O'Connell v. Schmidt, 122 0. G. 2065; Orcutt v. Mc- 
Donald, Jr., and McDonald, 123 0. G. 705. 
The rule that concurrent decisions in the Patent Office will 

be followed, is especially applicable in a case which involves 



Rule 148 APPEAL TO THE COUET. 634 

complicated constructions about which the experts of the 
Patent Office are less liable to err than ourselves. 

Lindmark v. Hodgkinson, 137 0. Gr. 228; Seeberger v. 
Dodge, 114 0. G. 2382. 
That these tribunals have reached their conclusions by dif- 
ferent paths does not detract from the weight to be given to 
their decisions. 

Bourn v. Hill, Jr., 123 0. G. 1284. 
Where the facts are admitted and a mere question of law 
is involved, the Court will not hesitate to reverse the judg- 
ment appealed from if convinced that an erroneous conclu- 
sion was reached. 

Woods V. Poor, 130 0. G. 1313. 
The burden of overcoming the cumulative decisions of the 
lower tribunals is on the applicant. 

C. of D. of C. Bauer v. Crene, 120 0. G. 1824. 
We have repeatedly held that except in extreme cases, we 
will not go behind the declaration of interferences in order 
to determine the question of identity of invention. 
Bechman v. Southgate, 127 0. G. 1254. 
The decisions of the expert tribunals of the Office (orig- 
inal disclosure) will be accepted, except in extreme cases 
where palpable error has been committed. 
Kilbourne v. Hirner, 128 0. G. 1689. 
We are not warranted in reversing a decision of the Office 
because of a mere doubt of its correctness. 
Munster v. Ashworth, 128 0. G. 2088. 
Where the tribunals of the Patent Office agree in deciding 
the same way in question of fact, this court will not reverse 
such a decision unless it clearly appears that the decision was 
against the weight of evidence. 

Eichards v. Burkholder, 128 0. G. 2533. 
If the decisions of the lower tribunals had been the other 
way they would have been followed being as they are they 
will be followed. 

Dunbar v. Schellinger, 128 0. G. 2937. 
It is evident that the review of this case must be abridged 
as far as practicable. 

In succession the three tribunals of the Office have agreed, 
in their conclusions, and as we have so often announced, this 
court will not reverse the unanimous decisions except in a 
very clear case. 

Wickers v. Furlong v. McKee, 129 0. G. 869. 
A unanimous decision by the experts of the Patent Office 
will be accepted as conclusive when there is no palpable error. 



635 APPEAL TO THE couET. Rule 148 

(Kilbourne v. Horner, 39 App. D. C. 54-52; Lindmark v. 
Hodgkinson, 31 App. D. C. 612.) 

Becker v. Bird, 228 0. G. 407. 
Where the facts are admitted, and a mere question of law 
is involved, the court will not hesitate to reverse the judg- 
ment appealed from if convinced that an erroneous conclu- 
sion was reached. 

Woods V. Pover, 130 0. G. 1313. 
The rule that concurrent decisions in the Patent Office 
will be followed is especially applicable in a case which in- 
volves a complicated construction about which the Experts 
of the Patent Office are less liable to err than ourselves. 

Lindmark v. Hodgkinson, 137 0. G. 228. 

(8) Mandamus. 

Where a party delays beyond the time limited to take his 
appeal, mandamus will not lie to the Supreme Court to com- 
pel the Court of Appeals to entertain the appeal. 
Hein, 79 0. G. 507. 
A mandamus to compel the Court of Appeals to hear ap- 
peal from Commissioner on question of division not the 
remedy. It should be to the Examiners-in-Chief in the 
first place. 

Frasch, 109 0. G. 554. 
Mandamus is not an alternative remedy with appeal. 

United States ex rel. Tuttle v. Allen, Commissioner of 
Patents, 126 0. G. 760. 
Mandamus to the Commissioner on appeal to the Court, 
the remedy where an appeal to the Board is denied. Frasch, 
109 0. G. 554. No appeal as to the division of an applica- 
tion. 

Frasch, 100 0. G. 1977. 
ISTo appeal can be taken to the Supreme Court of the 
United States from a decision of the Court of Appeals refus- 
ing a mandamus to compel the Commissioner to register a 
trade-mark. 

The United States ex rel. the State of South Carolina v. 
Seymour, Commissioner, 67 0. G. 1191. 

(9) Effect of the Decision of the Court on the Commissioner. 

The Commissioner is bound to follow the decision above 
upon those points only which were raised by the appeal, and 
upon no other. 

It is for a judge to say that a decision of the Commis- 



Rule 148 APPEAL TO THE COURT. 636 

sioner shall be affirmed or rever&ed, not to say that a patent 
shall or shall not issue. 

Abraham v. Fletcher, 69 C. D. 50. 
The Office is bound to take notice of the decision of the 
Court and may base its action upon the finding of facts 
contained therein. 

Tournier, 108 0. G. 798. 
After a decision by the Court of Appeals it is too late to 
dissolve for lack of interference in fact. 
Gilbart, 85 0. G. 454. 
It is conceivable that a case might arise where the Com- 
missioner might grant a rehearing after a decision by the 
Court of Appeals on the question of priority. 
Scott V. Brooks, 71 0. G. 1314. 
After an appeal to the Court of Appeals refusing the al- 
lowances of certain claims, a case will not be reopened for 
the consideration of additional claims except under unusual 
circumstances. That the Court put an interpretation on the 
claims not contemplated by applicant not sufficient. 
Milans, 135 0. G. 1122. 
After an appeal on the question of priority, the Commis- 
sioner may refuse a patent to the successful party. 
Sobey v. Holsclaw, 126 0. G. 3041. 

(10) Miscellaneous. 

The Court can not control the discretion of the Commis- 
sioner as to the length of argument he should permit. 
Sobey v. Holsclaw, 126 0. G. 3041. 
The Court is powerless to direct the action of an execu- 
tive officer unless a positive legal right is being invaded by 
the officer where the duty imposed upon him is clearly pre- 
scribed and enjoined by law. The duty, however, must be 
so plain and pointed that the officer has no discretion left. 
(Merriel on Mandamus, p. 64.) 

Moore, Com. of Pats., v. U. S. ex rel. Boyer, 138 0. G. 
530. 
jSTeither writ of error or appeal will be allowed by this 
Court. Decision not to prejudice an application to any one 
of the justices of the Supreme Court. 
Eousseau v. Brown, 104 0. G. 1122. 
The two lower tribunals of the Office held that the in- 
ventions were the same, and the Commissioner that they were 
different, the theory of the Commissioner accepted without 
enquiry. 

Cushman v. Lines, 78 0. G. 2051. 



637 APPEAL TO THE COURT. Rule 148 

Judgment in an interference proceeding will not be made 
final by the Office after the filing of a notice of appeal, on 
the ground that it was filed one day late, it being regarded 
as being within the discretion of the Court to relieve against 
the default. 

Proutt V. Johnston and Jolmston, 130 0. G. 2718. 
The Court has no power to award costs. 

Wells V. Eeynolds, 69 0. G. 1507. 
When a record was introduced, but on examination found 
to have no bearing in the case, it must be at the cost of the 
one offering it. 

' Stevens v. Seher, 81 0. G. 1932. 

A general assignment of error in appeal from the Exam- 
iner to the Board is sufficient to base the question of res 
adjudicata upon, or it might have been raised by the Board 
on its own motion. 

Carroll v. Hallwood, 135 0. G. 896. 
B. has appealed, but his assignment of errors does not 
challenge tTie decision of the Commissioner on the question 
of priority of invention and to this extent he is presumed 
to have acquiesced in the decision against him. 
Bechman v. Wood, 15 App. D. C. 487. 
(In an interference case.) The present is no more than 
a moot cause since upon the face of the record itself the 
question of patentability has been expressly reserved for fur- 
ther and future consideration. 

Oliver v. Felbel, 100 0. G. 2384. 
A party may take advantage of all the time allowed by 
law without prejudicing his case. 

Jones V. Starr, 117 0. G. 1495. 
An assignment of a trade-mark permitted after notice and 
before appeal is perfected. 

Levy & Co. v. Uri, 131 0. G. 1689. 
We will not consider affidavits filed either in this Court 
or the Patent Office relating to changes that have occurred 
in drawings, models, experimental machines and like ex- 
hibits. These matters must be wholly settled in the Patent 
Office (Blackford v. Wilder, 104 0. G. 580.) 

Greenwood v. Dover, 109 0. G. 2173; Willsin v. Brad- 
shaw, 91 0. G. 648. 
Affidavit verified before notary who was also attorney in 
the case is invalid. The prohibition of attorneys acting as 
notaries in the Code of the District applies to attorneys out- 
side of the District. 

The Hall Safe Co. v. Herring-Hall-Marvin Safe Co., 135 
0. G. 1804. 



Eule 149 NOTICE of appeal. 638 

Appeal from a decision upon the right to amend prelimi- 
nary statement. 

Cross V. Phillips, 87 0. G. 1399. 

Rule 149. Notice to Commissioner of Appeal to Court. 

When an appeal is taken to the Court of Appeals 
of the District of Columbia, the appellant shall give 
notice thereof to the Commissioner, and file in the 
Patent Office, within forty days, exclusive of Sundays 
and holidays, but including Saturday half holidays, 
from the date of the decision appealed from, his rea- 
sons of appeal specifically set forth in writing. 

Eev. Stat., sec. 4912; sec. 9, act of February 9, 1893. 

CONSTRUCTIONS. 

Court granted a petition relieving a default in view of the 
fact that the opposite party did not object. 
Truby, 268 0. G. 383. 
Eeinstatement of an appeal not taken within the forty 
days allowed by Eule 21, refused. 
Hitchcock, 247 0. G. 965. 
Will entertain a motion for a new trial pending an appeal. 
Clements v. Eichards v. Meissner, 111 0. G. 1627. 
This rule limits the time in which the appeal must be taken 
to forty days from the date of the order appealed from, ex- 
cludins: the day of date. 

Burton v. Bentley, 87 0. G. 2326. 
The Office has no power to extend time. 

Clement v. Eichards v. Meissner, 111 0. G. 1626-7. 
Saturday after 12 o'clock is a legal holiday and is to be 
computed as one-half day. 

Ocumpaugh v. Norton, 114 0. G. 545. . 
A party allowed to prosecute his appeal when notice was 
filed one day late. 

Proutt V. Johnston and Johnston, 130 0. G. 2118. 
The rule that all appeals taken from the Commissioner of 
Patents shall be taken within forty days from the date of the 
ruling and not afterward is a positive law to the Court and 
to the suitors therein. 

Eoss V. Loewed, 77 0. G. 2141; Bryant v. Seymour, 
Com. of Patents, 77 0. G. 1599. 



639 HOTJE OF HEAEiNG. Rule 151 

The two years allowed for an action by E. S. 4894 is not 
applicable to appeals to the Court of Appeals. 
77 0. G. 1600. 
The running of the time limited for appeal is not arrested 
by a motion for a new trial. 

Eoss V. Loewer, 77 0. G. 2141; Bryant v. Seymour, 
Com. of Patents, 77 0. G. 1599. 
Whenever the time for appeal has gone by the time for 
rehearing has elapsed with it. 

Scott V. Brooks, 71 0. G. 1314. 

Rule 150. Pro Forma Proceedings in Patent Office. 

Pro forma proceedings will not be had in the Patent 
Office for the purpose of securing to applicants an 
appeal to the Court of Appeals of the District of Co- 
lumbia. 

(For forms of appeals and rules of the Court of 
Appeals of the District of Columbia respecting ap- 
peals, see, Rules 148, 149.) 

Rule 151. Hour of Hearing. 

Hearings will be had by the Commissioner at 10 
o'clock a. m., and by the board of examiners in chief 
at 1 o'clock p. m., and by the examiner of inter- 
ferences upon interlocutory matters at 10 o'clock 
a. m., and upon final hearings at 11 o'clock a. m., on 
the day appointed unless some other hour be spe- 
cifically designated. If either party in a contested 
case, or the appellant in an ex parte case, appear at 
the proper time, he will be heard. After the day of 
hearing, a contested case will not be taken up for 
oral argument except by consent of all parties. If 
the engagements of the tribunal having jurisdiction 
be such as to prevent the case from being taken up 
on the day of hearing, a new assignment will be made, 
or the case will be continued from day to day until 
heard. Unless it shall be otherwise ordered before 



Rule 152 PAETIES AND ATTOKNEYS. 640 

the hearing begins, oral arguments will be limited to 
one hour for each party in contested cases, and to 
one-half hour in other cases. After a contested case 
has been argued, nothing further relating thereto will 
be heard unless upon request of the tribunal having 
jurisdiction of the case; and all interviews for this 
purpose with parties i-n interest or their attorneys 
will be invariably denied. 

CONSTRUCTIONS. 

The fact that two hearings before difEerent tribunals are 
set at the same time is proper and does not invalidate the 
notice. 

Bombard v. United States Graphite Co., 129 0. G. 479. 

Rule 152. Wishes of Parties and Attorneys. 

Hearings in ex parte and contested cases will, as 
far as is convenient and proper, be set, advanced, and 
adjourned to meet the wishes of the parties and their 
attorneys. 

Rule 153. Practice in Motions. 

In contested cases reasonable notice of all motions, 
and copies of motion papers and affidavits, must be 
served as provided in Rule 154 {h). Proof of such 
service must be made before the motion will be enter- 
tained by the office. Motions will not be heard in the 
absence of either party except upon default after due 
notice. Motions will be heard in the first instance by 
the officer or tribunal before whom the particular case 
may be pending. In original hearings on motions the 
moving parties shall have the right to make the open- 
ing and closing arguments. In contested cases the 
practice on points to which the rules are not applica- 
ble shall conform as nearly as possible, to that of the 
United States courts in equity proceedings. 



641 PRACTICE IN MOTIONS. Rule 153 

CONSTRUCTIONS. 

Settine^ of hearing. 

199^0. G. 1. 
A petition by an assignee of a jDart interest to intervene 
in the prosecution of an application will be dismissed, where 
such petition was not accompanied by proof of service upon 
the other assignees and upon the applicant. 
Kyle, 193 0. G. 753. 
An objection for want of notice of filing an amended pre- 
liminary statement disregarded in view of the fact that ob- 
jector had ordered a copy of the same. 
Klenk v. Ivruse, 177 0. G. 130.0. 
In serving notice for taking testimony, ample time should 
be given counsel to communicate with his client and arrange 
his business affairs before he is compelled to start on his 
journey. Otherwise testimony should be stricken out. 
Sanderson v. Hanna & Hanna, 173 0. G. 586. 
The sufficiency of the notice depends largely upon the 
circumstances. In this case a notice given in New York City 
on May 3 that certain witnesses would be examined at Battle 
Creek, Mich., on May 5, held sufficient. 

Kuth et al. v. Lundquit et al. v. Lorimer et al., 157 
0. G. 754. 
A party taking his own testimony thought it was only 
necessary for him to commence taking his testimony within 
the time limited. Ignorance held not to excuse. 
Mattice v. Langworthy, 140 0. G. 507. 
The motion of October 8 which is entitled "a motion for 
a rehearing" was, in effect, a motion to set aside the decision 
of October 6 for lack of service of Pickard's motion. As no 
abuse of discretion on the part of the Examiner of Interfer- 
ences has been shown in holding that the reasons given were 
not sufficient to justify the setting aside of his prior decision, 
it will not be disturbed. 

Pickard v. Ashton and Curtis, 137 0. G. 977. 
After pleadings have been filed, proofs taken, and the case 
ready for final hearing, an applicant for cancelation will not 
be permitted to withdraw his application without prejudice 
to his right to file a new application. 

Ontcault V. The New York Herald Company, 136 0. G. 

437. 

The rule provides that reasonable notice of all motions 

must be given and that a motion will not be entertained in 

absence of proof of service. The same reason exists for re- 



E-ule 153 PEACTiCE in motions. 642 

quiring notice of the renewal of a motion as of the motion 
itself, and the mere request at the final hearing is not such 
notice. 

Dyson v. Sand v. Dunbar v. Browne, 133 0. G. 1679. 
He therefore granted the motion because the certificate of 
the notary showed that the requirement of the rule had not 
been complied with, citing Eolfe v. Taylor, 111 0. G. 1938. 
Ehodes v. Ehodes, 132 0. G. 680. But see note to Eule 
159. 
• That a notice was not served in time should be remedied 
by an extension of time, and not noted on the record for 
subsequent consideration. 

Phillips V. Scott, 13"0 0. G. 1312. 
The statement made by an officer charged with the duty 
of correctly recording the testimony of a witness and such 
events as counsel may desire to have recorded can not be 
overcome by the oath of a single witness. 

Munsler v. Ashworth, 129 0. G. 2085-2088. 
A motion to amend declaration in a trade-mark case so as 
to insert a statement of ten years' exclusive use, which state- 
ment had been previously withdrawn in view of testimony in 
an interference case, refused. 
Kenyon, 125 0. G. 1702. 
The signature to a notice is sufficient if the party notified 
understands from the signature from whom or in whose inter- 
est the notice is given. 

Ileyne, Haywood & McCarthy .v. De Vilbliss, Jr., 125 0. 
G. 669; Adams-Randall, 125 0. G. 1700. 
Where affidavits are filed by any of the parties which are not 
in answer to affidavits filed by opponents, they must ordinarily 
be served upon the opponents at least five days before the 
hearing. Affidavits in rebuttal may then be filed, but should 
be served before the hearing. 

Browne v. Stroud, 122 0. G. 2688. 
The petition must be denied on the merits, but it is to be 
noted also that copies were not served upon the opposing par- 
ties, and that therefore it is informal. 

Kolb V. Hemmingway v. Curtis, 122 0. G. 1397. 
It is the well-settled practise of this Office, as announced in 
Kletsker & Goesel v. Dodson, 109 0. G. 1336, C. D. 1904, 100, 
and other decisions, that an appeal filed after the expiration of 
the limit of appeal will not be entertained except upon a veri- 
fied showing why it was not presented in proper time. 
Tliullen V. Young & Townsend, 120 0. G. 904. 



643 PRACTICE IN MOTIONS. Rule 153 



The time of hearing is a matter resting in the discretion of 
the tribunal before whom the case is pending. 
Cazin v. Von Welsbach, 119 0. G. 550. 

A petition to suspend an interference and declare a new one 
will not be considered when the opposing party was not noti- 
fied. 

Hansen, 117 0. G. 2632. 

A notice given at 10 o'clock that testimony was to be taken 
at 2, where all parties attended and the testimony was brief, 
testimony not stricken out, notwithstanding moving party re- 
fused to cross-examine. 

Eoberts v. Webster, 115 0. G. 2135. 

It seems service of papers on Saturday afternoon in the Dis- 
trict of Columbia is legal. 

Goodfellow v. Jolly, 115 G. G. 1064. 

New grounds for dissolution, not of record in either appli- 
cation and not included in the motion, must be served upon 
the opposing party at least 5 days before the hearing. If no- 
tice of the new grounds is not served, and service is not 
waived, these grounds will not be considered by the Primary 
Examiner in deciding the motion. (Wells v Parker, 90 0. G. 
1947; Summers v. Hart, 98 0. G. 2585; Kurz v. Jackson v. 
Pierce, 2586; Whitlock v. Hudson v. Scott, 99 0. G. 1385.) 
In cases where due service of the new grounds could not have 
been rendered, a postponement of the hearing should be re- 
quested, and the request being accompanied by a statement of 
facts. 

Young V. Eick, 113 0. G. 547; Fowler, 113 0. G. 549. 

A notice that would necessitate travel on Sunday is insuffi- 
cient. Counsel must be given time to prepare for a journey. 
Goodfellow V. Jolly, 111 0. G. 1940. 

Xotice served June 16, at 12 o'clock, for taking testimony 
in Erie, Pa., 10 A. M. June 18, is insufficient, even if it con- 
tained names of witnesses. 

Tripp v. Wolff V. Ames, 108 0. G. 563. 

An affidavit filed after the hearing relating to the merits 
stricken from the files, as these rules contemplate that a party 
shall be given notice of his opponent's case before the hearing. 
Miller, 105 0. G. 1532-33. 

It should be noted that both applications here involved are 
owned by the same party, and that the same attorney appears 
for botli parties; under such circumstances the Office should be 
particularly on its guard to prevent unreasonable delays. Un- 
reasonable delays in the prosecution of interferences will not 
be permitted merely because the parties agree to the delay. 
Sponsel V. Darling, 105 0. G. 498. 



Eule 153 PEACTiCE in motions. 644 

Notice of new matter in cases transmitted under Eule 126. 

Greenawalt v. Mark, 103 0. G. 1913. 
All parties must be notified. 

Grand v. Abbott v. Grand & McGraw, 103 0. G. 662. 
Motions in which no proof of service upon the opposite party 
is made will not be entertained. 

Bechman v. Johnson, 1889 C. D. 181; 48 0. G. 673; C. C. 
97 0. G. 2531; 92 0. G. 1236; 1890 C. D. 125. 
The notice of certain named witnesses and, perhaps, others, 
does not warrant the taking of the testimony of any witnesses 
than those named, at least under the circumstances of the case. 
A notice one day that the testimony will be taken the next day 
is not sufficient where attorneys are in a distant city and only 
represented by an associate attorney. 

Potter V. Ochs, 95 0. G. 1049, 1901 C. D. 39. 
It is not the practice of the Office to require a party to serve 
upon his opponent copies of all office records referred to in a 
motion made by him. 

Bundy v. Eumbacker, 92 0. G. 2002, 1900 C. D. 143. 
A petition that a certain application be withdrawn from issue, 
and a rule made that cause be shown why the order should not 
be made permanent. 

Spielman, 1892 C. D. 1 ; 58 0. G. 141. 
A motion based upon the same state of facts and reasons as 
a previous one should be refused on the ground that the mat- 
ter is res adjudicata. 

Little V. Little, Pillard & Sargent, 1876 C. D. 207, 15 0. 
G. 543; Banks v. Snediker, 1880 C. D. 95, 17 0. G. 508. 
A motion with notice is only necessary when a demand is 
made which may be refused. When a motion is made which 
must be granted, it is not a motion in the sense of this rule. 
Booth V. Lyman, 1880 C. D. 170, 17 0. G. 393. 
The usual rule is to exclude the first or last day of the no- 
tice, when not personally served. 

Hoag V. Abbott. 1879 C. D., 15 0. G. 471. 
A concession of priority excluded as evidence by the Exam- 
iner of Interferences for want of notice. 

Tucker v. Kahler, 1879 C. D. 71, 15 0. G. 966. 
A party cannot move to reform the declaration of interfer- 
ence without notice. 

Grav V. Bell, 1878 C. D. 133, 15 0. G. 133; Bell v. Gray, 
15 0. G. 776, 1879 C. D. 42. 
If a party would be compelled to travel night and day, the 
notice is not reasonable. 

Hoag V. Abbott, 1879 C. D. 3, 15 0. G. 471. 



645 DEPOSITIONS. Rule 154 

The appearance of a party in a ease, and the submission of 
arguments on the merits of the disputed points, is a virtual 
waiver of the right of notice. 

Keller & Olmsdahl v. Felder, 1876 C. D. 246, 10 0. G. 
944 
The usual rule is to exclude the first or last day of the no- 
tice when not personally served. 

Hoag V. Abbott, 1879 C. D. 3, 15 0. G. 471. 
The name of a witness was not given. 

Ivenerson v. Brown & Brown, 779 C. D. 349, 16 0. G. 
857; Masury, 73 C. D. 110. 

Rule 154. Notice of Taking Depositions. 

The following rules have been established for tak- 
ing and transmitting testimony in interferences and 
other contested cases: 

(a) Before the depositions of witnesses shall be 
taken by either party due notice shall be given to the 
opposing party, as hereinafter provided, of the time 
when and place where the depositions will be taken, 
of the cause or matter in which they are to be used, 
and of the names and residences of the witnesses to 
be examined, and the opposing party shall have full 
opportunity, either in person or by attorney, to cross- 
examine the witnesses. If the opposing party shall 
attend the examination of witnesses not named in the 
notice, and shall either cross-examine such witnesses 
or fail to object to their examination, he shall be 
deemed to have waived his right to object to such 
examination for want of notice. Neither party shall 
take testimony in more than one place at the same 
time, nor so nearly at the same time that reasonable 
opportunity for travel from one place of examination 
to the other can not be had. 

(h) The notice for taking testimony or for motions 
must be served (unless otherwise stipulated in an in- 
strument in writing filed in the case) upon the attor- 



Rule 154 DEPOSITIONS. 646 

ney of record, if there be one, or, if there be no at- 
torney of record, upon the adverse party. Reason- 
able time must be given therein for such adverse 
party to reach the place of examination. Service of 
such notice may be made in either of the following 
ways: (1) By delivering a copy of the notice to the 
adverse party or his attorney; (2) by leaving a copy 
at the usual place of business of the adverse party 
or his attorney with some one in his employment; 
(3) when such adverse party or his attorney has no 
usual place of business, by leaving a copy at his resi- 
dence, with a member of his family over 14 years of 
age and of discretion; (4) transmission by registered 
letter; (5) by express. Whenever it shall be satis- 
factorily shown to the Commissioner that neither of 
the above modes of obtaining or reserving notice is 
practicable, the notice may be published in the Official 
Gazette. Such notice shall, with sworn proof of the 
fact, time, and mode of service thereof, be attached 
to the deposition or depositions, whether the opposing 
party shall have cross-examined or not. 

(c) Each witness before testifying shall be duly 
sworn according to law by the officer before whom 
his deposition shall be taken. The deposition shall 
be carefully read over by the witness, or by the officer 
to him, and shall then be subscribed by the witness 
in the presence of the officer. The officer shall annex 
to the deposition his certificate showing (1) the due 
administration of the oath by the officer to the witness 
before the commencement of his testimony; (2) the 
name of the person by whom the testimony was writ- 
ten out, and the fact that, if not written by the officer, 
it was written in his presence; (3) the presence or 
absence of the adverse party; (4) the place, day, and 



647 DEPOSITIONS. Rule 154 

hour of commencing and taking the deposition; (5) 
the reading by, or to, each witness of his deposition 
before he signs the same; and (6) the fact that the 
officer was not connected by blood or marriage with 
either of the parties, nor interested, directly or indi- 
rectly, in the matter in controversy. The officer shall 
sign the certificate and affix thereto his seal of office, 
if he have such seal. He shall then, without delay, 
securely seal up all the evidence, notices, and paper 
exhibits, inscribe upon the envelope a certificate giv- 
ing the title of the case, the name of each witness, 
and the date of sealing, address the package, and for- 
ward the same to the Commissioner of Patents, If 
the weight or bulk of an exhibit shall exclude it from 
the envelope, it shall be authenticated by the officer 
and transmitted in a separate package, marked and 
addressed as above provided. 

(d) If a party shall be unable to take any testimony 
within the time limited, and desire an extension for 
such purpose, he must file a motion, accompanied by 
a statement under oath setting forth specifically the 
reason why such testimony has not been taken, and 
distinctly averring that such motion is made in good 
faith, and not for the purpose of delay. If either 
party shall be unable to procure the testimony of a 
witness or witnesses within the time limited, and de- 
sire an extension for such purpose, he must file a mo- 
tion, accompanied by a statement under oath setting 
forth the cause of such inability, the name or names 
of such witness or witnesses, the facts expected to be 
proved by such witness or witnesses, the steps which 
have been taken to procure such testimony, and the 
dates on which efforts have been made to procure it. 
(See Rule 153.) 



Rule 154 DEPOSITIONS. 648 

(e) Upon notice given to the opposite party before 
the closing of the testimony, any official record, and 
any special matter contained in a printed publication, 
if competent evidence and pertinent to the issue, may 
be used as evidence at the hearing. 

(/) All depositions which are taken must be duly 
filed in the Patent Office. On refusal to file, the office 
at its discretion will not further hear or consider the 
contestant with whom the refusal lies; and the office 
may, at its discretion, receive and consider a copy of 
the withheld deposition, attested by such evidence as 
is procurable. 

'Eev. Slat., sec. 4905. 

HISTORY. 

In 1869, Rule 50 read in part as follows : "In contested 
cases no motion will be heard in the absence of the other 
party, except upon default after due notice; nor will a case 
be taken up for oral argument after the day of hearing except 
by consent of both parties. If the engagements of the tribunal 
before whom the case is pending are such as to prevent it from 
being taken up on the day of hearing, a new assignment will 
be made, or the case will be continued from day to day until 
heard." 

And Rule 57 of 1869 reads: "If either party wishes the 
time for taking his testimony, or for the hearing, postponed, 
he must make application for such postponement, and must 
show sufficient reason for it by affidavit filed before the time 
previously appointed has elapsed, if practicable; and must also 
furnish his opponent with copies of his affidavits, and with 
seasonable notice of the time of hearing his application." 

In 1870, the following rule was added: "Reasonable notice 
of all motions and copies of the motion papers and affidavits 
must be served upon the opposite party or his attorney." 

In 1871 the- rules read: "In contested cases, reasonable no- 
tice of all motions and copies of the motion papers and affi- 
davits must be served upon the opposite party or his attorney. 
Proof of such service must be made before the motion will be 
entertained by the Office; and motions will not be heard in 
the absence of either party except upon default after due no- 
tice. Motions will be heard in the first instance by the officer 



649 DEPOSITIONS. Rule 154 

or tribunal before whom the particular case may be pending; 
but an appeal from the decision rendered may be taken to the 
commissioner in person." 
See Rule 153 and notes. 

CONSTRUCTIONS. 

(1) Notice. 

(2) Oeal Stipulation. 

(3) Official Certificate. 

(4) Motions to Extend Time foe Taking Testimony, 

(5) Official Eecoeds and Special Matters Offered in 

Evidence. 

(6) Depositions to be Filed in Patent Office. 

(7) Miscellaneous. 

(1) Notice. 

A deposition was suppressed where a party had given no- 
tice once, but not attended at the time and place assigned; 
afterward he gave a second notice, and took the deposition 
which was suppressed. 

Densten v. Burnham, 136 0. 0. 388. 
A notice given at 10 o'clock that testimony was to be taken 
at 2, where all parties attended, and the testimony was brief 
testimony not stricken out notwithstanding moving party re- 
fused to cross examine. 

Roberts v. Webster, 115 0. G. 2135. 

(2) Oral Stipulation. 

The certificate of the notary on the record is sufficient proof 
of the agreement between counsel. An oral stipulation as to 
taking testimony is sufficient. 

Fairbanks & Sauer v. Karr, 113 0. G. 1148. 

(3) Official Certificate. 

The omission of these formalities may be sufficient ground 
for suppressing the deposition. 

Eolfe V. Taylor, 111 0. G. 1938. 

(4) Motion to Extend Time for Taking Testimony. 

The rule is very clear in requiring a verified showing,- and 
there is no excuse for failing to comply with them. 
Eippeto V. Stephens, 105 0. G. 1779. 
If the irregularities arose through inadvertences, and not 



Rule 154 DEPOSITIONS. 650 

through a desire to delay or Overreach, it is proper, upon a 
satisfactory showing, to extend the time. 

The Shaw & Welty Shirt Co. v. The Quaker City Shirt 
Co., 157 0. G. 1000. 
If there is lack of diligence in procuring the testimony, no 
extension allowed. 

McCallum v. Bremer, 1900 C. D. 186, 93 0. G. 1917. 
The fact that one is financially unable to take the testimony 
accepted as an excuse when it appeared that there was a pros- 
pect of his bec'oming so. 

Wightman v. Eothenstein, 1903 C. D. 82, 98 0. G. 2172. 
A less showing of diligence is required in these than where 
a case has been decided. The unwillingness of witness. 
Watson D. Thomas, 1902 C. D. 90, 98 0. G. 3361. 
In the absence of good reasons for delay, the motion will be 
refused. 

Brilland Adams v. Uebelacker, 1902 C. D. 220, 99 0. G. 
2966. 
Additional time will not be given to afford an opportunity 
to rebut the testimony that one of the exhibits does not dis- 
close the invention. 

Pfatischer v. Buck, 1902 C. D. 390, 101 0. G. 1370. 
The action of Davis, in absenting himself beyond all ordi- 
nary means of communication, without even leaving his ad- 
dress by which he might be communicated with, must be con- 
sidered as a waiver of his rights to present his testimony. 
Davis V. Cody, 1902 C. D. 388, 101 0. G. 1369. 
Ignorance, inadvertence or mistake on the part of a party 
or his attorney, is no ground for a new trial. 

Eoberts v. Bachelle, 1902 C. D. 415, 101 0. G. 1831. 
Where a party delays taking his testimony until the last of 
the time allowed, and gives no good reason, time should not 
be extended. 

Eeynolds v. Bean, 1902 C. D. 461, 101 0. G. 2821. 
The rule as to the sufficiency of the reason is not so strictly 
applied in regard to the first extension, but in all cases good 
reasons must be given. 

Wilcomb V. Lasher, 1902 C. D. 485, 101 0. G. 3109. 
Motion to reopen and further take testimony should be 
heard and determined in the first instance by the Examiner 
of Interferences. 

Eobinson v. Townsend v. Copeland, 106 0. G. 997. 
Motion should contain names of witnesses that are to be ex- 
amined. 
' Tripp V. Wolf V. Jones, 108 0. G. 563. 



651 DEPOSITIONS. Rule 154 

Extensions of time not favored. 

Dunbar v. Sehellinger, 113 0. G. 2313-4; Dalton v. Hop- 
kins V. Newman, 121 0. G. 2666. 

(5) Official Records and Special Matters Offered in Evidence. 

The records of the Patent Office is sufficient to prove the 
contents of a French patent. 

Eobin V. Muller and Bonnet, 108 0. G. 292. 

The Bules provide for the introduction of records as evi- 
dence during the period assigned for taking testimony; but the 
adverse parties are entitled to introduce such rebuttal as they 
may be advised to make, after which the case can proceed to. 
hearing and decision upon all the evidence adduced. 
Booth V. Lyman, 80 C. D. 151, 18 0. G. 132. 

While it is 23roper, in some cases, to take cognizance of the 
records of this office which have not been placed in evidence in 
order that justice may be done (Cain v. Park, 86 0. G. 707), 
it is- not thought that they should ordinarily be examined when' 
not placed in evidence for the sole purpose of discrediting a 
witness. If they had been placed in evidence T. would have 
had an opportunity to explain them. 
Bowditch V. Todd, 112 0. G. 1477. 

(6) Depositions to he Filed in Patent Office. 

Immediately after taking testimony the notary left for Eu- 
rope, and did not file testimony until his return. In the ab- 
sence of any showing of injury to the other side, a motion to 
suppress was refused. 

Moss V. Blaisdell, 113 0. G. 2505. 

(7) Miscellaneous. 

Subject-mater of this rule. 

Claasen v. Stiffen, 113 0. G. 2507-8. 

The fact that H. said nothing about his invention when he 
examined the drawings of another might possibly be explained, 
but his failure to make an application for a year afterward 
hardlv 

ilarter v. Barrett, 114 0. G. 975. 

The provision of the statutes giving an applicant the right 
to have a claim twice rejected (Sees. 4003 and 4909 E. S.) 
does not apply in inter partes cases where a Primary Examiner, 
on motion to dissolve, decides that one of the parties has no 
right to make the claims of an interference issue, and such 
party, after filing an appeal from said decision, fails to prose- 
cute the same, and abandons it, such decision becomes final and 



Rule 154 DEPOSITIONS. 652 

binding upon the parties, and precludes the subsequent ex 
parte consideration of the same question. 

United States of America ex rel. The Newcomb Motor Co. 
V. Moore, Com., etc., 133 0. G. 1680. 
The question whether one of the parties to an interference 
proceeding is debarred from receiving a patent for the same 
invention is a question of ex parte consideration after tlie ter- 
mination of the interference. 

Gueniffet, Benoit and ISTicault v. Wictorsohn, 134 0. G. 



9 



00. 



It is incumbent upon a party to present the entire case in 
the first instance; when a case has been decided on stipulation 
it will not be reopened to take testimony. 
De Ferranti v. Lindmark, 137 0. G. 731. 

Eefusal to explain a certain portion of the device because 
it was the subject-matter of a separate invention, and failure 
to file an application therefor, evidence of an abandoned ex- 
periment. 

Eeichenbach v. Eilley, 94 0. G. 1185. 

It is essential to the reopening of a case, after the testimony 

is all taken, and a party is thus put in possession of the facts 

of his opponent's case, that a clear showing of diligence be 

made out, and it must be shown that the testimony is material. 

Eobinson v. Townsend v. Copeland, 1903 C. D. 405, 101 

0. G. 1611. 

A practice which would allow a contestant to experimentally 
conduct his own case to a probable failure, and then permit 
him, after consulting with competent assistance, to make fur- 
ther endeavors to show what he could and should have earlier 
shown with such assistance, would be contrary to all well-es- 
tablished rules and legal principles. 

Werk V. MeCurran, 103 0. G. 890. 

Now while affidavits would be permitted to show or ex- 
plain material changes that may have occurred by accident or 
otherwise, in an exhibit after its transmission to this court, 
when the details of its construction might be of importance in 
determining the issue, they will not be received in contradic- 
tion or correction of the record of the proceedings in the 
tribunals of the Patent Office. 

Blackford v. Wilder, 104 0. G. 581. 

It appears to be well settled that the right to take evidence 
to explain or surrebut evidence given in rebuttal is a matter 
resting in the discretion of the court (Greenleaf, Vol. 1, 16 
Ed., pp. 601-3), and that this privilege will be extended to a 
party whenever he has been surprised by evidence or a line of 



653 . TESTIMONY. Rule 156 

defense in rebuttal which he has had no reason to anticipate or 
.opportunity to prepare against. 

Donning v. Stackpole v. Lagank, 106 0. G. 264; Winton v. 
JefEery, 112 0. G. 500. 

Rule 155. Formalities. 

The pages of each deposition must be numbered 
consecutively, and the name of the witness plainly 
and conspicuously written at the top of each page. 
The testimony must be written upon legal cap or 
foolscap paper, with a wide margin on the left-hand 
side of the page, and with the writing on one side 
only of the sheet. 

Rule 156. Testimony. 

The testimony will be taken in answer to interrog- 
atories, with the questions and answers committed to 
writing in their regular order by the of&cer, or, in 
his presence, by some person not interested in the 
case either as a party thereto or as attorney. But 
with the written consent of the parties the testimony 
may be taken stenographically, and the deposition 
may be written out by other persons in the presence 
of the officer. 

Where testimony is taken stenographically, a long- 
hand or typewritten copy shall be read to the witness, 
or read over by him, as soon as it can be made, and 
shall be signed by him as provided in paragraph 3 
of Rule 154. No officer who is connected by blood or 
marriage with either of the parties, or interested, 
directly or indirectly, in the matter in controversy, 
either as counsel, attorney, agent, or otherwise, is 
competent to take depositions, unless with the written 
consent of all the parties. 



Rule 157 TESTIMONY USED IN INTERFERENCE. 654 

CONSTRUCTIONS. 

Where the testimony was taken stenographically, and tran- 
scribed, 24 days' delay was not considered unreasonable. In 
the absence of any stipulation, the objection that the notary 
permitted the exhibits to be taken out of his possession and 
custody is well taken. 

Eolfe V. Taylor, 111 0. G. 1938. 
The objection that the testimony was taken stenographically, 
without written consent, of no force when the moving party 
did not attend. This rule should be read with E. 159, that says 
no attention will be given to merely formal objections. 
Eolfe V. Taylor, 111 0. G. 1938. 
Objection to a notary because he was an employe of the at- 
torney, not made at the taking of the testimony, is waived. 
Eoyce v. Kempshall, 117 0. G. 3090. 
Eule 156 does not apply to preliminary statements. 
Bundy v. Eumbarger, 1900 C. D. 94,^ 91 0. G. 2210. 

Rule 157. Testimony Taken in one Interference may 
be Used in Another. 

Upon motion duly made and granted (see Rule 153) 
testimony taken in an interference proceeding may 
be used in any other or subsequent interference pro- 
ceeding, so far as relevant and material, subject, how- 
ever, to the right of any contesting party to recall 
witnesses whose depositions have been taken, and to 
take other testimony in rebuttal of the depositions. 

CONSTRUCTIONS. 

In an interference between H. and T., a witness testified to 
certain facts. Later, in an interference between H. and W., he 
denied any knowledge of these facts. Held, that T. and W. not 
being parties, the testimony in the former interference cannot 
be admitted in the latter except for the purpose of discrediting 
the witness, even if the witness is present and may be cross- 
examined. 

Hewitt V. Weintraub, 134 0. G. 1561. 

Where the real parties in interest in a pending interference 
are the same as in a prior interference, and the inventions in- 
volved are substantially the same, permission may be obtained 



655 TESTIMONY USED IN INTERFERENCE. Rule 157 

to use^ in the pending interference, the testimony taken in the 
former interference. 

Beall, Jr., v. Lyn, 127 0. G. 3215. 
The motion should not be denied because the present inter- 
ference relates to a process, whereas the other interferences re- 
late to apparatus, or because it contains unnecessary matter. 
Strube v. Young, 119 0. G. 338. 
It is not contrary to the fundamental rules of evidence to 
use in one cause depositions given in another cause involving 
the same parties. 

Kenny and Thordarson v. O'Connell v. Baird v. Schmidt, 
117 0. G. 1163. 
The object sought to be attained by consolidation can be 
accomplished by stipulating that the record taken in one inter- 
ference can be used in the other. 

Klein v. Groebli, 110 0. G. 305. 
Where in one interference one of the applicants admits that 
the proceeding is closely related to another interference in 
which he was involved, and introduces in evidence the decision 
in that other interference in which he was involved, and says 
that there is no objection to the introduction of the entire rec- 
ord, Held, that the opposing party may refer to the entire rec- 
ord without printing it as a part of the proofs. 
Hall V. Weber, 108 0. G. 1054. 
If the new interference is declared, Foote may make a mo- 
tion under Eule 157 to use the present testimony. Until the 
new interference is disclosed, such a motion cannot be enter- 
tained. 

Brooks V. Foote v. Wenk, 108 0. G. 287. 
It is well settled that Eule 157 relates merely to the form 
in which testimony may be introduced, and does not modify 
the other rules relating to the taking of testimony. 

The motion under consideration is not accompanied by a 
showing why Stackpole and Langanke did not introduce the 
testimony of which they desire to avail themselves at the time 
originallv set for taking testimony. 

Boning v. Stackpole & L., 107 0. G. 268. 
Even where such testimony is not admissible, it may be re- 
ferred to for the purpose of discrediting a witness. 
Talbot V. Morrell, 1902 C. D. 216, 99 0. G. 2965. 
Subject-matter of this rule. 
Wilson V. Haines, 1891 C. D. 210. 



Rule 158 TESTIMONY iisr fokeign counteies. 656 

Rule 158. Testimony Taken in Foreign Countries. 

Upon motion duly made and granted (see Rule 153) 
testimony may be taken in foreign countries, upon 
complying with the following requirements : 

(a) The motion must designate a place for the ex- 
amination of the witnesses at which an officer duly 
qualified to take testimony under the laws of the 
United States in a foreign country shall reside, and 
it must be accompanied by a statement under oath 
that the motion is made in good faith, and not for 
purposes of delay or of vexing or harassing any 
party to the case ; it must also set forth the names of 
the witnesses, the particular facts to which it is ex- 
pected each will testify, and the grounds on which is 
based the belief that each will so testify. 

(b) It must appear that the testimony desired is 
material and competent, and that it can not be taken 
in this country at all, or can not be taken here with- 
out hardship and injury to the moving party greatly 
exceeding that to which the opposite party will be 
exposed by the taking of such testimony abroad. 

(c) Upon the granting of such motion, a time will 
be set within which the moving party shall file in 
duplicate the interrogatories to be propounded to each 
witness, and serve a copy of the same upon each ad- 
verse party, who may, within a designated time, file, 
in duplicate, cross-interrogatories. Objections to any 
of the interrogatories or cross^interrogatories may be 
filed at any time before the depositions are taken, 
and such objections will be considered and determined 
upon the hearing of the case. 

(d) As soon as the interrogatories and cross-inter- 
rogatories are decided to be in proper form, the 
Commissioner will cause them to be forwarded to 



657 TESTIMONY IN FOREIGN" COtTNTRIES. Rule 158 

the proper officer, with the request that, upon pay- 
ment of, or satisfactory security for, his official fees, 
he notify the witnesses named to appear before him 
within a designated time and make answer thereto 
under oath; and that he reduce their answers to writ- 
ing, and transmit the same, under his official seal and 
signature, to the Commissioner of Patents, with the 
certificate prescribed in Rule 154 (c). 

(e) By stipulation of the parties the requirements 
of paragraph (c) as to written interrogatories and 
cross- interrogatories may be dispensed with, and the 
testimony may be taken before the proper officer upon 
oral interrogatories by the parties or their agents. 

(/) Unless false swearing in the giving of such tes- 
timony before the officer taking it shall be punishable 
as perjury under the laws of the foreign state where 
it shall be taken, it will not stand on the same footing 
in the Patent Office as testimony duly taken in the 
United States; but its weight in each case will be 
determined by the tribunal having jurisdiction of 
such case. 

Eev Stat., sec. 4905. 

CONSTRUCTIONS. 

A motion refused for want of a sufficient showing. 

Winn V. Thuillier v. Frisbie & Baker, 180 0. G. 1138. 
Motion to strike out improper cross-interrogatories properly 
granted before final hearing. 

Actiengeselleschaft Paulanerbrau Salvatorbrauerei v. Con- 
rad Seipp Brewing Co., 135 0. G. 1121. 
It appears tliat G. is not employed by the Company which 
is the assignee of Eupling's invention, and therefore that com- 
pany has no such control over him as would make it incum- 
bent upon them to send him to this country. A party who 
has regular employment cannot be presumed to be willing to 
give up that employment for the purpose of giving his testi- 
mony in a foreign country. Such cases differ from one in 
which the inventor himself, or a witness in his employ, de- 



Rule 159 EVIDENCE ON HEAEING. 658 

clines to leave his business for the purpose of testifying in a 
foreign country. Affidavits. 

Lowry v. Eupling, 135 0. G. 662. 
Expert evidence that the issues are not patentable to either 
party is not pertinent to the question of priority, and may not 
be admitted. 

Dixion and Marem v. Graves & Whittemore, 127 0. G. 
1993. 
Written interrogatories necessary. 

Herreschoff v. Knietsch, 111 0. G. 1039. 
But not without mutual consent. 

Hereschoff v. Knietsch, 111 0. G. 1039. 
G. wishes to show that S. received his knowledge of the in- 
vention from parties who received their knowledge from G. 
The facts alleged tend to support this contention, and G- 
should not be prevented from proving those facts merely upon 
the suggestion of an ulterior motive. Any improper question 
will appear when the interrogatories are filed. 
Stiff V. Galbraith, 108 0. G. 290. 
Testimony cannot properly be taken in foreign countries 
otherwise than as prescribed by Eule 158 (3), unless the pro- 
cedure be waived by stipulation of the parties. Eule 158 (5). 
Eaffard v. DeFerranti, 1892 C. D. 161. 
The commissioner has power to issue letters rogatory for the 
taking of testimony, whereas in Germany, the ordinary com- 
mission cannot legally be executed. The letters will be issued 
upon a proper showing when the interrogatories to be pro- 
pounded have been filed. 

Potter V. Oehs, 97 0. G. 1835, 1901 C. D. 205. 
The date of filing an application for a British patent is im- 
material in a question of priority, and leave to take testimony 
for this purpose will not be granted. The convention has not 
been made effective in this country by Congress, notwithstand- 
ing the U. S. has adhered to it. 

Butterworth v. Brae and Kymer v. Ecob, 97 0. G. 1596, 
1901 C. D. 193. 
Without the antecedent authority of the Commissioner, depo- 
sitions taken in a foreign country are inadmissible as evidence. 
Lauder v. Crowell, 1879 C. D. 177, 16 0. G. 405. 

Rule 159. Evidence on Hearing. 

Evidence touching the matter at issue will not be 
considered on the hearing which shall not have been 



659 EVIDENCE ON HEARING. Rule 159 

taken and filed in compliance with these rules. But 
notice will not be taken of merely formal or technical 
objections which shall not appear to have wrought a 
substantial injury to the party raising them; and in 
case of such injury it must be made to appear that, 
as soon as the party became aware of the ground of 
objection, he gave notice thereof to the office, and 
also to the opposite party, informing him at the same 
time that, unless it be removed, he (the objector) will 
urge his objection at the hearing. This rule is not to 
be so construed as to modify established rules of evi- 
dence, which will be applied strictly in all practice 
before the office. 

CONSTEUCTIONS. 

The junior party alleges the filing of a caveat. He has also 
alleged other disclosures in his preliminary statement, and it 
is optional with him whether to rely upon the caveat or not. 
If he does not wish to rely upon his caveat, he is justified in 
withholding it from inspection. If he offers his caveat in evi- 
dence the other party will be able to inspect it. 
Stauft V. Eeeder, 157 0. G. 308. 
Deposition not read. It wa;s alleged reading was waived. ISTo 
notice whatever appears to have been given either to the Office 
or to the opposing party. For this reason it is believed that the 
deposition should not have been suppressed. 
Ehodes v. Ehodes, 132 0. G. 680. 
A motion to suppress testimony in the decision of which a 
review of a large portion of the testimony would be involved 
will be postponed to the final hearing. 

Dyson v. Sand v. Dunbar v. Browne, 130 0. G. 1690. 
Where the motion to suppress testimony was granted after 
the testimony was printed, it will be a sufficient compliance 
with the ruling in Marconi v. Shoemaker v. Fessenden, 121 0. 
G. 2664, for the docket clerk to indicate in the usual manner 
in the printed record the matter which has been expunged. 
130 0. G. 1690. 
A refusal to suppress testimony not reversible error. 

Kempshall v. Eoyce, 129 0. G. 3162. 
Affidavit of a physician that a witness was unable to testify 
not admissible. The physician should have been called. 
Munsler v. Ashworthy, 128 0. G. 2088. 



Rule 159 EVIDENCE ON HEAEING. 660 

Objections made when the testimony is taken must be spe- 
cific. (Authorities.) 

Emmet v. Fullagar, 124 0. G. 2178. 

Where the witness, upon direct examination, refuses to an- 
swer practically every question regarding particular apparatus, 
and no questions are asked thereon about the detailed struc- 
ture of the apparatus, or about theories, principles, operations, 
or results, a deposition on cross-examination setting forth such 
matters throughout fift}'' or more typewritten pages is prima 
facie haC. 

Marconi v. Shoemaker v. Fessenden, 121 0. G. 2664. 

An appeal from the Examiner's ruling raises only the ques- 
tion whether or not the Examiner was right in postponing the 
consideration of the question, which is a matter that will not 
be reviewed and reversed except in a clear case of abuse of 
discretion. 

Eoyce v. Kempshall, 119 0. G. 338. 

The objection to certificate because it fails to state whether 
a party or his attorney was present when the deposition was 
taken, but both of the parties agree that neither said party 
nor his attorney was present, is not substantial, nor is a slight 
delay, not caused by a party, sufficient to warrant the striking 
out of the testimony. 

Eoyce v. Kempshall, 117 0. G. 2090. 

The Court of Appeals will not review a decision of the Com- 
missioner expunging testimony, but applicant may have relief 
under E 8. 4915 and 4918. 

Jones V. Starr, 117 0. G. 1495. 

The ^Totary acted outside of the territory in which he was 
authorized to administer oaths. "The reservation" (in the 
stipulation) "of certain objections, and the failure to reserve 
the one now made taken with the delay in making the objec- 
tion must be regarded as a waiver." 

Badger v. Morgan & Hoheisel, 117 0. G. 598. 

If the testimony of a wife in favor of her husband in such 
a matter as the present is admissible at all, and if disclosure 
to a wife is disclosure of an invention to others or to the pub- 
lic, in the sense of the Patent Law, about which grave doubts 
may well be entertained, certainly such testimony must be rig- 
idly scrutinized, and not lightly admitted as sufficient without 
corroboration. 

Harter v. Barrett, 114 0. G. 975. 

The testimony of Harter's father-in-law amounts to nothing, 
for he does not tell what was disclosed to him, except in a 



661 INSPECTION. Eule 161 

most vague and general way that is utterly useless for the pur- 
pose of the corroboration of Harter's statement. 
Harter v. Barrett, 114 0. G. 975. 
When the deposition is suppressed because of unfair and 
overreaching conduct, to the prejudice of the adverse party, 
the denial of a motion to retake the testimony is proper. 
Jones V. Starr, 111 0. G. 2221. 
The omission of these formalities does not seem to be good 
grounds for suppressing the deposition. 
Eolfe V. Taylor, 111 0. G. 1938. 
It has been the uniform practice not to suppress the testi- 
mony before final hearing. 

Talbot V. Monell, 1902 C. D. 216, 99 0. G. 2965; Hall v. 
Alvord, 1902 C. D. 418, 101 0. G. 1833; Andrews v. 
Nelson,, 101 0. G. 1038. 
A motion to suppress testimony in the determination of 
which the entire case will have to be gone into will be post- 
poned to the final hearing. 

Hall V. Alvord, 1902 C. D. 418, 101 0. G. 1833. 
Because of formal irregularities, testimony ordered retaken. 
Blackman v. Alexander, 1902 C. D. 323, 100 0. G. 2383. 
See also Hewitt v. Wientraub, 134 0. G. 1561. 

Rule 160. Subpoenas. 

The law requires the clerks of the various courts 
of the United States to issue subpoenas to secure the 
attendance of witnesses whose depositions are desired 
as evidence in contested cases in the Patent Office. 

Rev. Stat, sec. 4906. 

H. B. No. 11984 has a provision for subpoenas duces 
tecum. 

CONSTRUCTIONS. 

The filing of a motion in a court to compel a witness to 
answer is a simple matter, and an unexplained delay of three 
weeks is sufficient to authorize a refusal to extend time for 
taking testimony. 

Donning v. Anderson, 111 0. G. 582. 

Rule 161. Inspection. 

After testimony is filed in the office it may be in- 
spected by any party to the case, but it can not be 
withdrawn for the purpose of printing. It may be 



E-ule 162 COPIES or testimony. 662 

printed by someone specially designated by the office 
for that purpose, under proper restrictions. 

Rule 162. Copies of Testimony. 

Thirty-one or more printed copies of the testimony 
must be furnished — five for the use of the office, one 
for each of the opposing parties, and twenty-five for 
the Court of Appeals of the District of Columbia, 
should appeal be taken. If no appeal be taken, the 
twenty-five copies will be returned to the party filing 
them. The preliminary statement required by Rule 
110 must be printed as a part of the record. These 
copies of the record of the junior party's testimony 
must be filed not less than forty days before the day 
of final hearing, and in the case of the senior party 
not less than twenty days. They will be of the same 
size, both page and print, as the Rules of Practice, 
with the names of the witnesses at the top of the 
pages over their testimony, and will contain indexes 
with the names of all witnesses and reference to the 
pages where copies of papers and documents intro- 
duced as exhibits are shown. 

When it shall appear, on motion duly made and by 
satisfactory proof, that a party, by reason of poverty, 
is unable to print his testimony, the printing may be 
dispensed with; but in such case typewritten copies 
must be furnished — one for the office and one for each 
adverse party. Printing of the testimony can not be 
dispensed with upon the stipulation of the parties 
without the approval of the Commissioner. 

HISTORY. 

Amended to read thirty-one and twenty-five. March 29, 
1901. 

95 0. Ct. 235. 



663 COPIES OF TESTIMONY. Rule 162 

CONSTRUCTIONS. 

If junior party fails to print, judgment of priority in favor 
of opposing party. 

Browne v. Gillitt, 191 0. G. 832. 
If a party is excused from printing his testimony, if it is 
necessary for the oifering party to appeal to the Court of 
Appeals, it would throw upon him the burden of printing his 
opponent's testimony. A party ought not, therefore, be ex- 
cused except in extreme cases. 

Landau v. Spitzenberg, 159 0. G. 742. 
Default relieved against. Doubted if default is the penalty 
of disregarding this rule. 

Dunkley v. Bickjuist, 158 0. G. 886. 
The assets of the company should be set out in the affidavit. 

McManus v. Hammer, 143 0. G. 562. 
Must show that all interested parties are unable to print. 

McManus v. Hammer, 143 0. G. 561. 
That it is inconvenient for the party to print the record not 
sufficient. 

McManus v. Hammer, 143 0. G. 562. 
Considering C.'s request for sufficient time to permit him 
to print and file his testimony forty days before the final hear- 
ing, T. agreeing, it will be granted. 

Corrington v. Turner, 136 0. G. 1067. 
Appeal will lie from an order striking an application from 
the files on account of an unauthorized amendment or altera- 
tion. 

Moore v. Heaney, 34 App. D. C. 31. 
Will review a holding that an application is abandoned. 

Selden, 164 0. G. 741. 
The fact that the senior party took no testimony is not a 
sufficient reason for waiving the requirements of the rule. 
Alberson Bros. Milling Co. v. Forest, 311 0. G. 1419. 
Eeopening of case to permit party to print his opponent's 
testimonv refused in view of the delay. 
Parker v. Corkhill, 130 0. G. 2067. 
If only one party takes testimony, still he must print it. 

Peak v. Brush. 129 0. G. ]26S'. 
Last clause — This provision is not to be extended. 

Dow V. DesJardins, 119 0. G. 1923. 
Judgment on the record was rendered against a party who 
had failed to print his testimony without considering his tes- 
timony. 

Cooper & Somers v. Bannister, 112 0. G. 1480. 



Rule 163 SIZE of beiefs. 664 

Subject-matter of this rule. 

Faller v. Lorimer, 111 0. G. 579. 
Eule requiring testimony to be printed is of binding force. 

Phimmer v. Penniston, 1894 C. D. 60. 

BRIEFS. 
Rule 163. Size and Time of Filing Briefs. 

Briefs at final hearing and on appeals from final 
decisions in contested cases shall be submitted in 
printed form and shall be of the same size and the 
same as to page and print as the printed copies of 
testimony. But in case satisfactory reason therefor 
is shown, typewritten briefs may be submitted. Six 
copies of the briefs at final hearing shall be filed 
three days before the hearing. Briefs on appeals 
shall be filed as provided in Rule 144. 

At interlocutory hearings and on appeal from in- 
terlocutory decisions typewritten briefs may be used, 
and such briefs may be filed at or before the hearing. 
By stipulation of the parties or by order of the tribu- 
nal before whom the hearing is had briefs may be 
filed otherwise than as here prescribed. 

CONSTRUCTIONS. 

These rules were construed in Newcomb v. Simp (109 0. 
G. 2171), where it was held that the typewritten briefs might 
be T«eceived on motions and on interlocutory appeals, and that 
it was unnecessary to file printed copies, as required by Rule 
147, except for final hearings. 

Stevens v. Patterson, 142 0. G. 568. 

See note to Rule 147. 

It is a general principle of law that the statements of coun- 
sel with regard to a case are privileged, and that he is per- 
mitted to use language in his argument, and make statements 
in his brief which, if used out of court, might be considered 
objectionable. 

Schellenbach v. Harris, 111 0. G. 2223. 

One brief on a side. The requirement of printing not ap- 
plicable to interlocutory motions and appeals. 
109 0. G. 2172. 



665 NOTICE OF ALLOWANCE. Rule 164 

A brief filed after the hearing, without the consent of the 
Examiner^ expunged from the files. An accompanying affi- 
davit also canceled from the files. 
Miller, 105 0. G. 1532. 
The records of the office, being regular, will be accepted as 
evidence of allowance and notice of that fact. The Commis- 
sioner has no authority to extend the time for paying the 
final fee. 

Haeseler & Taylor, 101 0. G. 2836. 
Affidavits as to the opinions as to the scope and meaning 
of the issue, and as to the question of interference in fact be- 
tween the claims involved in this interference, are inadmissible. 
Summers v. Hart, 1902 C. D. 104, 98 0. G. 2585-6. 
Proper divisional patents between process and product, ma- 
chine and product and machine and method, should issue 
simultaneouslv, and not otherwise. 
Holt, 29^0. G. 170. 

t 
ISSUE. 

Rule 164. Notice of Allowance. 

If, on examination, it shall appear that the appli- 
cant is justly entitled to a patent under the law, a 
notice of allowance will be sent him or his attorney, 
calling for the payment of the final fee within six 
months from the date of such notice of allowance, 
upon the receipt of which within the time fixed by 
law the patent will be prepared for issue. (See Rules 
167, 194.) 

Eev. Stats., sees. 4885, 4893, 4897. 

CONSTRUCTIONS. 

The records of the Office, being regular, will be accepted as 
evidence of allowance and notice of that fact. The Commis- 
sioner has no authority to extend the time for paying the final 
fee. 

Haeseler & Taylor, 101 0. G. 2826. 

Under the practice of the Office, after an application has 
been allowed, and the notice of allowance sent to the appli- 
cant or his agent, the act of allowance is complete, and the 
application can only be returned to the jurisdiction of the Ex- 



Rule 165 WITHDRAWAL FROM ISSUE. 666 

aminer by a formal withdrawal of the application from the 
issue files. 

100 0. G. 2774. 
Proper divisional patents between process and product, ma- 
chine and product and machine and method, should issue simul- 
taneously, and not otherwise. 

Holt, 29 0. G. 170. 

Rule 165. Withdrawal from Issue. 

After notice of the allowance of an application is 
given, the case will not be withdrawn from issue ex- 
cept by approval of the Commissioner, and if with- 
drawn for further action on the part of the office a 
new notice of allowance will be given. Wlien the final 
fee has been paid upon an application for letters 
patent, and the case lias received its date and num- 
ber, it will not be withdrawn from issue on account 
of any mistake or change of purpose of the applicant 
or his attorney, nor for the purpose of enabling the 
inventor to procure a foreign patent, nor for any 
other reasons except mistake on the part of the office, 
or because of fraud, or illegality in the application, 
or for interference. (See Rule 78.) 

CONSTRUCTIONS. 

Will not be withdrawn for the insertion of an invention so 
distinct as to require a suplemental oath, even for the pur- 
pose of an interference. 

Stimson, 226 0. G. 699. 

The final fee having been paid, and the case having received 
its date and number, under Eule 165. 
Orandoff, 140 0. G. 1001. 

Applicant filed an amendment withdrawing claims rejected, 
.and on the same day filed an appeal and withdrawal of such 
amendment. Held, that the appeal should be forwarded. 
Kruse, 133 0. G. 229. 

It is not the practice of the Office to withdraw a case from 
issue unless the Office has made an obvious mistake, except in 
cases where irremediable injury would occur. In this case ap- 
plicant is not without remedy, for he can allow the case to be- 



667 WITHDKAWAL, FROM ISSUE. Rule 165 

come forfeited, renew the same, and present the claims of the 
Parker patent, and secure the interference he desires. 
Meyer, 130 0. G. 1689. 

Issue not stayed to await result of bill in equity under 
E. S., sec. -1915. 

Dunbar v. Shellinger, 129 0. G. 2087. 
See order, 132 0. G. 735. 

For interference. If the application is now withdrawn from 
issue, it will be necessary for this Office to stamp the patent 
"withdrawn" in seven thousand copies of the Official Gazette, 
and to make the proper entries in the records. Such a burden 
should not be placed upon the Office through no fault of its 
own, except under extraordinary circumstances. Petition de- 
nied. 

Dorman, 102 0. G. 1049. 
The application will not be withdrawn from issue to await 
the termination of an interference in which a divided aj)pli- 
cation is involved, so that patents on the two applications may 
issue on the same day. 

Carroll, 115 0. G. 510. 
See 94 0. G. 2169. 

The withdrawal of an application from issue for the pur- 
pose of inserting a claim previously presented and voluntarily 
canceled will not be permitted. 

Blakeslee, 1893 C. D. 72, 63 0. G. 1201. 
Motion to vacate an interference judgment because of al- 
leged misunderstanding as to what applications were included 
denied. 

Huntor v. Knight, 1892 C. D. 211. 
An application will not be withdrawn from issue for the in- 
sertion of new claims because applicant was surprised by the 
allowance after the interference had terminated, when he 
knew it was readv for allowance. 

Pierce, 1901 C. D. 224, 97 0. G. 2307. 
For mode of procedure, see order Xo. 629, Oct. 15, '98, pub- 
lished in 0. G., 92d volume, and page 1239. 

An application will not be withdrawn from issue for the 
purpose of adding claims to a feature described and reserved, 
but not claimed in a prior patent to the same inventor, because 
of the fact that more than two years have elapsed since said 
prior patent was issued, when it appears that a new application 
can be filed in such a manner that the two applications may 
be considered continuous. 

Schieling, 1892 C. D. 147. 60 0. G. 160; ^^ash, 1892 C. 
D. 146, 60 0. G. 15A. 



Rule 165 WITHDRAWAL FROM ISSUE. 668 

The rule that an application will not be withdrawn from is- 
sue for the purpose of allowing an applicant to amend his 
claims is subject to exception only in cases where its enforce- 
ment would work irremediable injury. 

Gold, 1892 C. D. 138, 59 0. G. 2067. 
An application Avill not be withdrawn from issue to permit 
applicant to reinsert a claim originally presented, but volun- 
tarily erased. 

'Wood, 1892 0. D. 4. 
An application will not be withdrawn from issue if such 
withdrawal will have the effect, directly or indirectly, of ex- 
tending the time allowed by law for the payment of the final 
fee. 

Brand, 1891 C. D. 134, 56 0. G. 1062. 
Where an application has. been once forfeited and renewed, 
it will not be withdrawn from issue for the purpose of adding 
new claims in the absence of a showing of hardship. 
Myer, 1891 C. D. 6, 54 0. G. 265^: 
A case will not be withdrawn from issue for the sake of in- 
corporating the claims of a forfeited application. 
Hopkinson, 1891 C. D. 4, 54 0. G. 264. 
Amendment after allowance, in case a refusal would work 
irreparable injury; as to introduce claims that could not be 
claimed in a separate application. 

Myer. 1889 C. D. 198, 49 0. G. 131. 
A patent may be withheld any time before it is both signed 
and sealed. 

Hunt, 1878 C. D. 149. 
When the Commissioner may deem it improper to complete 
the issuance of a patent after it has been signed, he should 
forthwith transmit the case, before taking further action there- 
in, with his reasons for declining to complete the issuance of 
such patent, to the Secretary of the Interior, for consideration 
and instruction. 

Hunt, 1878 C. D. 149. 
The Commissioner has a right to withhold from issue a 
patent allowed by one of his subordinate officers. 

Hull V. The" Commissioner of Patents, 2 McArthur, 90. 
Subject-matter of the rule. 

Simonson, 1890 C. D. 177, 53 0. G. 1571. 



669 DATE OF PATENT. E-ule 167 

Rule 166. Withdrawal from Issue will not stay Aban- 
donment. 

Whenever the Commissioner sliall direct the with- 
drawal of an application from issue on request of an 
applicant for reasons not prohibited by Rule 165, this 
withdrawal will not operate to stay the period of one 
year running against the application, which begins 
to attach from the date of the notice of allowance, 

CONSTRUCTIONS. 

Where an application is withdrawn from issue at the re- 
quest of the appHcant to await the allowance of a related ap- 
plication; and no action is taken therein until after the expira- 
tion of the statutory period allowed for taking action, which 
dates from the notice of allowance, the application is aban- 
doned in the absence of special circumstances excusing the 
delay. 

Brooks, 127 0. G. 847. 

DATE, DURATION AND FORM OF PATENTS. 

Rule 167. Date of Patent. 

Every patent shall issue within a period of three 
months from the date of the payment of the final 
fee, which fee shall be paid not later than six months 
from the time at which the application was passed 
and allowed and notice thereof was sent to the appli- 
cant or his agent; and if the final fee be not paid 
within that period the patent shall be withheld. (See 
Rule 175.) In the absence of request to suspend issue 
the patent will issue in regular course. The issue 
closes weekly on Thursday, and the patents bear date 
as of the fourth Tuesday thereafter. 

A patent will not be antedated. 

Rev. Stat., sees. 4885, 4935. 

See notes to Rules 164 and 194. 



Rule 167 DATE OF PATENT. 670 

CONSTRUCTIONS. 
The records of the Post Office taken as conclusive that a 
letter containing the final fee was not put into a receptacle 
set apart for the Patent Office until after the expiration of the 
time limited. 

In re Dempsey, 132 0. G. 1074. 
The Post Office is the agent of the sender in transmitting the 
final fee. 

Dempsey, 132 0. G. 1072. ' 
It was said the notice was not received. It is not alleged 
that no notice was mailed, and the record indicates clearly that 
it was mailed. Under such circumstances, this Office has no 
jurisdiction to extend the time for the payment of the final 
fee, either directly or indirectly. 
Glafke, 122 0. G. 351. 
It is the time of sending the notice that time is to be 
reckoned from. The records of the Office are proper to fix 
this date. The Office cannot extend the time. 
Pieper, 115 0. 0. 1063. 
The final fee must be delivered. It is not sufficient that it 
was deposited in the mail in due time. Applicant is responsi- 
ble for the agent he chooses for transmission. 
Cannon, 94 0. G. 2165. 
Notice to the inventor is equivalent to notice to the admin- 
istrator. 

Deeter, 93 0. G. 190-91. 
Six calendar months. 

Brown, 1893 C. D. 64, 63 0. G. 759. 
There is no discretion in the Commissioner to receive the fee 
after the time limited. 

Anderson, 1892 C. D. 221, 61 0. G. 886. 
Not even if the last day falls on a holiday. 

Mills, 1892 C. D. 11, 62 0. G. 317. 
Handing twenty dollars to a watchman not employed by the 
Patent Office, at 11 :55 P. M. on the last day of the six months' 
limit is not a payment of a final fee to the Office within the 
six months allowed by law. 

Poulter, 1891 C. D. 205, 57 0. G. 1128; approved by 
sec. 1892 C. D. 241. 58 0. G. 241. 
Inventor, or assignee, to file a new application for the in- 
vention within two years after the date of allowance. In the 
consolidation of the patent laws in 1870, however, the pro- 
visions of the Acts of 1863, that upon the forfeiture of the 
application the invention shall become public property, as 
against the applicant therefor, was omitted. 

Hardy, 1877 C. D. 110; Livingston, 1881 C. D. 42. 



671 COEKECTION OF MISTAKES. Rule 170 

Where a patent fee is paid to a subordinate specifying the 
case, it is effective as of the date of payment, and not the date 
when the certificate reaches the Office. (No reference given.) 

Subject-matter of this rule. 
Barri, 97 0. G. 1176. 

Rule 168. Title of Invention. 

Every patent will contain a short title of the in- 
vention or discovery indicating its nature and object, 
and a grant to the patentee, his heirs and assigns, 
for the term of seventeen years, of the exclusive right 
to make, use, and vend the invention or discovery 
throughout the United States and the Territories 
thereof. The duration of a design patent may be for 
the term of three and one-half, seven, or fourteen 
years, as provided in Rule 80. A copy of the specifi- 
cations and drawings will be annexed to the patent 
and form part thereof. 

Eev. Stat., sec. 4884. 

DELIVERY. 

Rule 169. Delivery of Patent. 

The patent will be delivered or mailed on the day 
of its date to the attorney of record, if there be one; 
or, if the attorney so request, to the patentee or as- 
signee of an interest therein; or, if there be no 
attorney, to the patentee or to the assignee of the 
entire interest, if he so request. 

CORRECTION OF ERRORS IN LETTERS PATENT. 

Rule 170. Correction of Mistakes Incurred Through 
Fault of the Office. 

Whenever a mistake, incurred through the fault 
of the office, is clearly disclosed by the records or files 



Rule 170 COERECTION OF MISTAKES. 672 

of the office, a certificate, stating the fact and nature 
of such mistake, signed by the Commissioner of Pat- 
ents, and sealed with the seal of the Patent Office, 
will, at the request of the patentee or his assignee, 
be indorsed without charge upon the letters patent, 
and recorded in the records of patents, and a printed 
copy thereof attached to each printed copy of the 
specification and drawing. 

Whenever a mistake, incurred through the fault of 
the office, constitutes a sufficient legal ground for a 
reissue, the reissue will be made, for the correction 
of such mistake only, without charge of office fees, at 
the request of the patentee. 

Mistakes not incurred through the fault of the 
office, and not affording legal grounds for reissues, 
will not be corrected after the delivery of the letters 
patent to the patentee or his agent. 

Changes or corrections will not be made in letters 
patent after the delivery thereof to the patentee or 
his attorney, except as above provided. 

CONSTRUCTIONS. 

Petitioner asks a reissue at the expense of the Office be- 
cause the errors were obvious, and ought to have been noted 
by the Examiner. Refused. 

Conrad & Conrad, 192 0. G. 517. 

It appearing that the attorneys were fully advised as to 
the record relating to the title, a certificate of correction in 
the issue refused, especially as not all the parties interested 
joined in the petition, nor does it appear that they were noti- 
fied. 

Jacobson, 183 0. G. 221. 
A certificate of correction will not be granted to make a 
patent conform to a change in practice. 

Bundle, 116 0. G. 593. 
The patent was issued to the inventor instead of to the as- 
signee. Held, that a certificate of correction would be granted 
on request, but that the patent would not be reissued. 

Fish, 114 0. G. 2091. 



673 coRKECTiOiS^ OF MISTAKES. Rule 170 

A paragraph was sought to be canceled, but by mistake was 
printed in the patent. A certificate of correction was thought 
to be sufficient, 

Barry, 113 0. G. 2095. 
Application to trade-marks. 
The Strobel & Wilken Co., 105 0. G. 2058. 
It is only to correct discrepancies between the original rec- 
ord and the patent as printed that certificates of correction are 
endorsed upon patents. 
105 0. G-. 500. 
The error in this case does not seem to be one calling for 
correction by the Office. The question is one of little import- 
ance, and it is not believed that it affects the validity or opera- 
tiveness of the patent. 
Long, 104 0. G. 851. 
The fact that the Office suggested a claim which was 
adopted by applicant is not sufficient ground for accepting a 
reissue application without the usual fee. 
Graves, 103 0. G. 228. 
A reference letter which appeared in the specification was, 
by mistake, not put on the drawing; it was held that the error 
being inconsequential, it would be corrected neither by cer- 
tificate nor reissue. 

Dailey, 101 0. G. 2825. 
The misspelling of a name is unimportant if the resemblance 
to the true name is sufficient for identification. A certificate 
is proper and sufficient to, correct such a mistake. 
101 0. G. 2569. 
A certificate granted to correct the middle initial in the sig- 
nature of applicant, and refused to correct the name of a wit- 
ness. If a signature is illegible, it is not the fault of the 
Office. 

Keen & Wims, 101 0. G. 1372. 
This certificate is the only proper remedy for a clerical mis- 
take which does not affect the scope of the patent. 
Alexander, 98 0. G. 2365. 
The misspelling of the name of one of the joint grantees of 
the patent, through the fault of the Office, should be corrected 
by a reissue and not by a certificate. Cancellation and granting 
a new patent suggested. 
97 0. G. 2305. 
The applicant requested a change in the title after the al- 
lowance. Eequest granted, and Examiner chancred title in pre- 
amble, but title was not changed elsewhere. Held, a case for 
certificate of correction and not for reissue. 
Dondict, 93 0. G. 551. 



Rule 171 ABANDONED APPLICATION. 674 

Certificates are only issued to make the patent correspond 
with the record in the office. 
Eosback, 89 0. G. 705. 

ABANDONED, FORFEITED, REVIVED AND RENEWED 
APPLICATIONS. 

Rule 171. Abandoned Application. 

An abandoned application is one in which all the 
essential parts have not been filed so that it is com- 
pleted and prepared for examination within a period 
of one year, or which the applicant has failed to 
prosecute within one year after any action therein 
of which notice has been duly given (see Rules 31 and 
77), or which the applicant has expressly abandoned 
by filing in the office a written declaration of abandon- 
ment, signed by himself and assignee, if any, identi- 
fying his application by title of invention, serial num- 
ber, and date of filing. (See Rule 60.) 

Prosecution of an application to save it from aban- 
donment must include such proper action as the con- 
dition of the case may require. The admission of an 
amendment not responsive to the last official action, 
or refusal to admit the same, and any proceedings 
relative thereto, shall not operate to save the appli- 
cation from abandonment under section 4894 of the 
Revised Statutes. 

Eev. Stat., sec. 4894. 

HISTORY. 

1869 — "7 — All applications not completed for examination 
within two years after the filing of the petition will be regarded 
as abandoned, unless it be satisfactorily proved to the office 
that such delay was unavoidable." 

1870 — "7 — All applications for patents shall be completed 
and prepared for examination within two years after the filing 
of the petition, and in default thereof, or upon failure of the 
applicant to prosecute the same within two years after any ac- 



675 ABANDONED APPLICATION. Rule 171 

tion tlierein, of which notice shall have been given to the ap- 
plicant, they shall be regarded as abandoned by the parties 
thereto, unless it be shown to the satisfaction of the Commis- 
sioner that such delay was unavoidable." 

1871 — "11. . . . two years after any action thereon, of 
which notice shall have been mailed to him or his agent . . 
. the model may be returned upon the filing of a formal 
abandonment signed by applicant in person." 

1873 — "40 — When the application has been rejected, but 
not withdrawn, any act which calls it up for further considera- 
tion upon its merits will be regarded as constituting a re- 
newal." 

1878 — Eule 39 under the general heading of "Abandoned 
Applications" reads as follows : 

"When an application for a patent has been rejected, and the 
applicant fails to renew the same or to file a new one within 
two years after the date when notice of the last official action 
was mailed to him or to his agent, Ms application will be held 
to have been abandoned. 

"Any action which calls such rejected application up for 
further consideration, within the time mentioned, will be re- 
garded as constituting a renewal." 

Rule 165 of 1879 "(and assignee, if any)" added 1883 "Se- 
rial number" and last sentence 1892, and two years changed to 
one year, 1897. 

Prior to the law of 1870 there was no fixed time that 
worked abandonment of a rejected case. 
Gordon, 6 0. G. 543, 1874 C. D. 108. 

As to the effect of this law, see Gray v. Hale, 1871 C. D. 
129. 

See notes to Rules 31, 65, 66, 68 and Rules 77, 116, 172. 



(1 
(2 
(3 
(4 
(5 
(6 
(7 



CONSTRUCTIONS. 

Rule in Genekal. 
Action by the Office. 
Action by Applicant. 
Time Limit. 

Delay Within the Limit. 
FoEMAL Abandonment. 
Additional Cases. 



(1) Rule in General. 

In this exceptionally complex art the Office has found itself 
unable to bring about an improvement. Amendments are de- 
layed in many instances until the end of the period allowed 



Rule 171 ABANDONED APPLICATION. 676 

by law, and when applications are passed to issue they fre- 
quently are forfeited and renewed with further amendments, 
and theii slow prosecution is renewed. 

The only possible relief from conditions which have become 
intolerable is to force an application to patent or abandonment 
whenever an opportunity presents itself. 
Dyson, 233 0. G. 755. 
The Court of Appeals will entertain the question of aban- 
donment. 

Selden, 164 0. G. 741. 
But not by mandamus. 

Sang V. Moore, Com., 172 0. G. 834. 
The question of abandonment may be raised in an interfer- 
ence proceeding. 

Kinsman v. Strohm, 125 0. G. 1699, 1906 C. D. 481, 31 
App. D. C. 587. 
The excuse that the last Office letter was not received is 
without weight' when it was known to applicant that such a 
letter was Avritten and he made no effort to get a copy. Fur- 
thermore, there is no affidavit on file relative to said letter. 
Woods, 121 0. G. 689, 1906 C. D. 103. 
Abandonment of application should be distinguished from 
abandonment of invention. 

Springer, 120 0. G. 2754, 1906 C. D. 85. 
If the first fee is not paid within a year the case is aban- 
doned. 

Kurz, 119 0. G. 961, 1905 C. D. 486. 
The law never presumed abandonment. 

Newberry v. O'Donohue, 111 0. G. 300, 1904 C. D. 249. 
If the original application was filed previous to Jan. 1, 
1893, the divisional application filed subsequent to that date 
is subject to the old law limiting the time for amendment to 
two years. 

Balzer, 101 0. G. 2824, 1902 C. D. 470. 
Apply to reissue application. 

Laughlin & Eeuleau, 92 0. G. 2003, 1901 C. D. 144. 
Eeissue cases are abandoned after two years of inactivity, 
like other cases, by operation of section 4894. 
Messinger, 78 0. G. 1903, 1897 C. D. 1. 
The fact that an inventor is dead, and that his executor 
has not asserted his rights, does not deprive an application of 
standing before the Office. It cannot be considered abandoned 
until the expiration of the time allowed by law for amendment. 
Decker v. Loosley, 77 0. G. 2140, 1896 C. D. 106. 



677 ABAlSTDOlSrED APPLICATION. RuIg 171 

Where an applicant for a patent already has a prior patent 
three and one-half 3'ears old, which fully describes the inven- 
tion claimed in the subsequent application, but does not claim 
it or make any reservation thereof, Held, to constitute aban- 
donment. 

Zipernowsky v. Edison, 58 0. G. 803, 1892 C. D. 23. 
Abandonment is never presumed, but must be always strictly 
proved. 

Clark V. Brown, 57 0. G. 1426, 1891 C. D. 217; Price, 57 
0. G. 1000, 1891 C. D. 201. 
Application abandoned by delay in not paying the first fee. 

Fennon, 52 0. G. 1665, 1890 C. D. 138. 
Abandonment is not favored, and must be conclusively 
proved. 

Johnston, 18 0. G. 1052, 1880 C. D. 207; Golding, 8 
0. G. 141, 1875 C. D. 98. 
Abandonment of the application is not abandonment of the 
invention. 

Golding, 8 0. G. 141, 1875 C. D. 98; Livingston, 20 0. 
G. 1747, 1881 C. D. 42; Crompton, 9 0. G. 5, 1876 C. 
D. 35; Casilear & Mclntire, 8 0. G. 474, 1875 C. D. 
117; see Mills, 7 0. G. 961, 1875 C. D. 74, 35 App. 
D. C. 377; Gray v. Hale, 1871 C. D. 129. 

(2) Action hy the Office. 

Where affidavits as to operativeness were filed and found in- 
sufficient, the rejection should not have been made final. 
McGill, 195 0. G. 817. 
When an applicant is referred to this rule he must exam- 
ine it. 

Vesey, 195 0. G. 273. 
Where applicant asks for an application of the references, 
and the Examiner thinks he has already given such, he should 
so state, and not finally reject the case. 
Perkins, 192 0. G. 1262. 
When two claims were objected to, and withdrawn, and one 
of them immediately reinserted. Held, the Examiner should 
have treated it as a request for a reconsideration, and not held 
the application abandoned because the action was not respon- 
sive. 

Ehrlieh Bertheim, 191 0. G. 1068. 
Under these circumstances there is no excuse for the delay 
in correcting the drawings in accordance with the Examiner 
requirements, and his action holding the case abandoned is 



Rule 171 ABANDONED APPLICATION. 678 

clearly right. If the amendment is not substantial a final re- 
jection is proper. 

Thomson v. Eeves, 184 0. G. 805, 806; Myers, 184 0. G. 
802. 
It would of course be improper for the Examiner to state 
fully for the first time his reasons for rejecting the claims in 
the letter in which the rejection was made final. 
Hartford, 184 0. G. 551. 
A reference to a decision held to be sufficiently definite 
statement of reasons. 

Patterson, 178 0. G. 885. 
Where a case is appealed, the decision of the Commissioner 
affirming the decision of the Examiner is sufficient without any 
action by the Examiner. 

Gale, Sr., 161 0. G. 530. 
A strained construction should not be placed upon an amend- 
ment in order that it may save the application from abandon- 
ment, but it should be construed according to the intent of 
the applicant as determines from a consideration of the whole 
instrument. 

Eichards, 124 0. G. 627, 1906 C. D. 321. 
Where Office gave wrong date of filing, leading applicant to 
pay fee after expiration of time limit, held not abandoned. 
Matthews, 117 0. G. 2631, 1906 C. D. 310. 
The Primary Examiner has no discretion in the matter, but 
acts in a ministerial capacity in comparing the dates; he acts 
in a ministerial capacity in determining whether the appli- 
cant's action is sufficient. In such case it is proper to ask for 
a reconsideration, but such request should be made with dili- 
gence, and should be accompanied by a statement of reasons. 
Naef, 115 0. G. 1583, 1906 C. D. 121. 
Letters written by Examiner after the abandonment do not 
relieve against abandonment. 

Eies, 113 0. G. 1147, 1904 C. D. 501. 
The irregularity of the final rejection by the Examiner is 
no excuse for the delay. He should have tried to have the 
Examiner's action set aside as irregular. 

Munson, 105 0. G. 264, 1903 C. D. 219. 
If no appeal or petition is taken within the time fixed by 
law, no inquiry will be made to determine whether the action 
was right or wrong. 

Munson, 105 'O. G. 264, 1903 C. D. 219. 
An action under Eule 96 establishes a date for the one year 
limitation. 

Coulson V. Callender & Callender, 101 0. G. 1607, 1902 
C. D. 395. 



679 ABANDONED APPLICATION. Rule 171 

A formal defect. 

Sack, 99 0. G. 2101, 1902 C. D. 187. 

The tacitly favorable action of one Examiner upon a ques- 
tion of abandonment should at least be persuasive upon his 
successor. 

Burson, 81 0. G. 2246, 1897 C. D. 196. 

If an amendment, after rejection, inserting additional claims 
and requesting suspension of action upon other matters for 
stated reasons, be admitted without question, it cannot be ob- 
jected to at a subsequent period as insufficient to obviate aban- 
donment. 

Burson, 81 0. G. 2246, 1897 C. D. 196. 

Where it appears that at no time while the case has been be- 
fore the Office has it been placed by the Examiner in condition 
for appeal to the Examiners-in-Chief upon its merits, Held, 
that although the action of the appellant has been irregular, 
the case has not become abandoned under second paragraph 
of Eule 171. 

Blessing, 71 0. G. 1027, 1895 C. D. 9. 

Error on the part of the Examiner does not cure parties' 
own laches. 

Hien, 62 0. G. 316, 1893 C. D. 7. 

Letters requiring division held to save case from abandon- 
ment. 

Hunter, 57 0. G. 999, 1891 C. D. 198. 

If in his letter of March 5, 1886, the Examiner had given 
the applicant clearly to understand that his action upon the 
question of division was simply a reiteration of his action in 
the same regard of February 13, 1885, I should hold that the 
application had become abandoned on the expiration of two 
years from and after February 13, 1885 ; but the Examiner is 
found as late at July 25, 1889, requiring a division in such a 
manner as to convey the inference that the case was still open 
for that action. I have grave doubts as to the right of the 
Office to thus practically nullify section 4894 of the statute, 
but the doubts do not justify me in holding that the applica- 
tion has become abandoned. 

Hunter, 57 0. G. 999, 1891 C. D. 198. 

(3) Action hy the Applicant. 

Piecemeal prosecution as an excuse for laches. 

Levy, 220 0. G. 1043. 
A petition from the ruling that the case is abandoned must 
be taken promptly. 

Thomas, 197 0. G. 977. 



Rule 171 abandoned application. 680 

If the Examiner objects to the multiplicity of claims, an an- 
swer that takes no notice of his objection is not responsive. 
Creveling, 197 0. G. 779. 
Amendment may be made by telegram, especially if con- 
firmed. 

Wheary, 197 0. G. 534. 
If the part of the claims rejected are to be abandoned they 
must bo definitely canceled. 

Iddings V. Iddings, 197 0. G. 239. 
Amendment filed in plenty of time and forwarded to an as- 
sociate, who inadvertently failed to file it. Enquiry was made 
in a reasonable time. Excused. 
Hilderbrandt, 196 0. G. 1051. 
Design application. An unsigned photograph filed instead 
of a drawing. Case abandoned. 
Bennett, 189 0. G. 1032. 
After a final rejection applicant canceled claims. He can- 
not be heard to question the propriety of the final rejection, 
even if an appeal on another question is necessary. 
Stickney, 185 0. G. 1379. 
The claims were rejected and amended. The amendment 
was held to constitute new matter, and was withdrawn. Case 
abandoned. 

Webster, 183 0. G. 1032. 
A change of wording of the claim without changing the 
meaning will not save it from abandonment. 

Kaufman, 182 0. G. 719. See Hice, 117 0. G. 2365. 
A petition to the Commissioner to reopen a case, which was 
denied, will not save a case from abandonment. 
Brenzinger, 182 0. G. 509. 
After electing to prosecute one set of claims, an amendment 
presenting another set is not a proper response to save the 
same from abandonment. 
Stroh, 180 0. G. 1137. 
Neglect to place explanation in specification as required 
proper foundation for final rejection. 
Dean, 177 0. G. 1295. 
A request to point out the pertinency of the references is 
not sufficient if applicant has not tried to show how the device 
differs. 

Sevy, 173 0. G. 288. 
A Swedish patent was cited for the first time, but not spe- 
cially applied. The applicant responded by canceling claims 
and substituting other claims which he said avoided the refer- 
ence. The Examiner held that he had not pointed out how 



681 ABANDOisrED APPLiCATioisr. Kule 171 

the new claims avoided the references; held that the prosecu- 
tion of the case (there being no evidence of intentional delay) 
met the requirement of the rules. 
Watters, 163 0. G. 231. 
A confused application filed — the specification was required 
to be rewritten, and in response a specification without claims 
filed. Not responsive. 

Kehrhahn, 163 0. G. 537. 
After the final rejection it was incumbent upon applicant to 
respond within a year either by appeal, by cancellation of the 
rejected claims, or by having the case reopened, as by submit- 
ting an amendment with verified excuse for not prosecuting it 
before final rejection. 

Sorenz, 160 0. G. 1039. 
The fact that the word "sole" was omitted from the oath 
held not to cause abandonment of the application. 
Mygatt, 160 0. G. 773. 
New drawings required blue prints only furnished, case held 
abandoned after one year from the requirements of new draw- 
ings. 

Mastagler, 159 0. G. 489. 
If claims are rejected and an amendment of the drawing re- 
quired, a compliance with the latter requirement will not be 
sufficient to relieve from abandonment. 

Sturtevant v. Sturtevant, 158 0. G. 885. 
Where an applicant was notified that certain interferences 
had been decided in his favor and that the case awaited ac- 
tion in response to previous Office actions. The filing of an 
amendment containing the claims of a patent and requesting 
an interference therewith is not such action as the condition 
of the case required, and did not operate to stay the running 
of the year from the previous Office action. 
Curtis, 138 0. G. 767. 
A person may not delay amending because if he does amend 
his opponent will have access to the amendment under Eule 
108. 

Dilg and Fowler, Jr., 133 0. G. 1837. 
Where, after a final rejection,- the proceedings were not such 
as to save the case from abandonment, a petition to set aside 
such rejection more than one year after such rejections should 
not be considered, even if a reconsideration was requested 
within the year. 

Fowler, 127 0. G. 1578; contra. More, 197 0. G. 533. 
A claim was presented which was in part responsive, but in 



Rule 171 ABANDONED APPLICATION. 682 

addition limitations were removed without explanation. Held, 
that the case was abandoned. 

Eichards, 124 0. G. 2534, 1906 C. D. 403. 
A mere request for reconsideration, without giving any rea- 
sons therefor, especially where a party has abandoned all hope 
or expectation of securing a patent, is not sufficient to save 
an application from abandonment. 

Krejce, 121 0. G. 1011, 1906 C. D. 111. 
If the action is not complete, it is not sufficient to prevent 
abandonment. 

Schmitt & Tanody, 121 0. G. 688, 121 C. D. 102 ; Sperry, 
121 0. G. 687, 1906 C. D. 100. 
Supposed error in Examiner's action no excuse for delay be- 
yond the time limit. 

Eichardson, 120 0. G. 2753, 1906 C. D. 83. 
Where applicant's attorneys place the case in condition for 
final action and final action is given, an applicant can not se- 
cure an extension of the time allowed b}^ law by revoking the 
power of attorney and filing a request for further explanation, 
even though such request is filed within the year. 
Cazin, 120 0. G. 660, 1906 C. D. 30. 
Where certain formal objections are raised and the claims 
are finally rejected, an amendment curing the formal objec- 
tions will not save the case from abandonment, even though by 
curing the formal objections the scope of the claims is changed. 
A final rejection must be met by an appeal, and not by an 
amendment changing the scope of the claims. 
Walton, 120 0. G. 659, 1906 C. D. 28. 
A proposed amendment does not save a case from abandon- 
ment that was finally rejected. 

Marr, 119 0. G. 2521, 1905 C. D. 556. 
Where applicant filed an appeal within the year, and asked 
to temporarilv withdraw it, the case not abandoned. 
Dieterle,'ll8 0. G. 1685, 1905 0. D. 410. 
A petition under Eule 145 is not in itself sufficient to pre- 
vent abandonment. "At the expiration of the year following 
final rejection the applicant must within that time file his ap- 
peal or take steps resulting in the setting aside of the final re- 
jection " 

Warmer, 118 0. G. 1684, 1905 G. T). 406, 22 App. D. C. 

267. 

If an appeal and an amendment are filed at the same time, 

and it is held that the amendment is not admissible, still the 

appeal is sufficient to prevent abandonment, as the law does 

not favor forfeiture. 

Bach, 118 0. G. 1363, 1905 C. D. 383. 



683 ABANDONED APPLICATION. E-ule Til 

The attorney prepared and forwarded a proper amendment 
in ample time, but it was not received by the Office. Upon 
discovering that fact, the attorney prepared and filed a second 
amendment. Held not abandoned, though the second amend- 
ment was not received until the expiration of the time lim- 
ited. 

Eluere, 117 0. G. 2635, 1905 C. D. 321. 
An application should not be held abandoned when an in- 
formal amendment was filed in good time. 

Gaylord, 117 0. G. 2366, 1905 C. D. 309. 
When a requirement for division has been made final, the 
only thing to prevent the time limit from running is to take 
a proper action to have the requirement set aside. 
Tuttle, 117 0. G. 1796, 1905 C. D. 274. 
"He had merely asserted twice that the references do not 
seem to anticipate the claims; but it is very clear that such 
assertion did not tend to furnish new light for the Examiner."' 
Case abandoned. 

Busenbenz, 117 0. G. 600. 
The question whether an amendment presented was such 
proper action as the condition of the case required must be de- 
termined by the practice of the Office in forcQ at the time, and 
it is not affected by a subsequent change of practice. 
Naef, 115 0. G. 2135, 1906 C. D. I2I. 
A request for reconsideration, without giving reasons why 
applicant thinks the Examiner erred, is not such action as the 
case demands, and the case may be held, to be abandoned. 
Linde, 115 0. G. 1329, 1905 C. D. 118. 
When there is a reqiiirement of division applicant must ap- 
peal or amend within the 3'ear. The question of division will 
not be reviewed upon petition. 

Galley, 115 0. G. 802, 1905 C. D. 95. 
As it is evident that all the actions that have been made 
in this case by the applicant have been for the purpose of 
making a substantial advance, and not for the purpose of de- 
lav, it is held that tlie application has not been abandoned. 
Smyth, 114 0. G. 762, 1905 C. D. 29. 
While an attempt to claim a species not originally claimed 
is not such action as the case demands within tliis rule, still 
in view of apparent good faith a proper amendment will be 
received if promptly filed. 

Lillie, 114 0. G. 541, 1905 C. D. 15. 
To save from abandonment the action must be responsive. 
Parkes, 113 0. G. 2213, 1904 C. D. 551. 



Rule 171 ABANDONED APPLICATION. 684 

The case became abandoned because applicant neglected to 
give his reasons for asking a reconsideration. 
Alton, 113 0. G. 1968-1969, 1904 C. D. 541. 
Where the Examiner finally rejects claims an appeal must 
be taken within a year or the propriety of the Examiner's ac- 
tion will not be considered. 

LePever, 110 0. G. 1430, 1904 C. D. 205. 
If the applicant's action was within the year it is imma- 
terial whether that of the office was or not. 
Lovejoy, 108 0. G. 1053, 1904 C. D. 52. 
The proposed amendment was not accompanied by a showing, 
duly verified, of good and sufficient reasons why it was not 
earlier presented. It was not therefore such proper action as 
the case required to keep it from abandonment. 
Lay, 107 0. G. 2337, 1903 C. D. 501. 
An action which does not and was not intended to make a 
substantial advance toward closing the prosecution of the ap- 
plication is not such a proper action as is required by the law 
and the rules. 

La Prance, 105 0. G. 262, 1903 C. D. 215. 
Must be such action as the case requires, either acquiescence 
in appeal to Examiners-in-Chief or a successful petition to the 
Commissioner. 

Landis, 103 0. G. 1164-5, 1903 C. D. 127. 
An amendment which, if entered, would require a division, 
is not such an action as will save the case from abandonment. 
The Commissioner is, however, vested with a judicial discre- 
tion to relieve against the penalty. (At this time a require- 
ment of division was a formal action, appealable to the Com- 
missioner in person.) 

McGenniss, 101 0. G. 2075, 1902 C. D. 422. 
A petition to the Commissioner which does not change the 
status of the case will not save it from abandonment. 
Pritts, 101 0. G. 1131, 1903 C. D. 383. 
Applicant filed a proper amendment within the required 
time, which was not entered for want of supplementary oath. 
The Examiner said "The applicant has not failed to act upon 
previous requirements, but has merely failed to anticipate a 
requirement subsequently made." 

Yerdon, 101 .G. 1830, 1892 C. D. 411. 
The Examiner rejected the claims and required a division. 
Applicant amended the claims and asked a reconsideration of 
the requirement to divide. Though doubted if the request to 
reconsider was sincere, still it was an action interrupting the 
time. 

Chamberlain, 101 0. G. 447, 1902 C. D. 354. 



685 ' ABANDONED APPLICATION, Eule 171 

A request for reconsideration as to part of the requirement 
of division and a compliance with the rest is an action limit- 
ing the running of the time limit. 

^aef, 100 0. G. 2601, 1902 C. D. 325. 
A request for reconsideration accompanied by an argument, 
and also by an additional claim which was objectionable be- 
cause requiring division, Held, that the request for considera- 
tion and argument was sufficient to save the case from aban- 
donment. 

Scott, 100 0. G. 681, 1902 C. D. 258, 25 App. D. C. 307. 
Part of claims rejected for one reason and part for another 
an amendment or request for reconsideration, as to part of the 
claims does not save the case from abandonment. 
Spiller, 99 0. G. 2320. 
The insertion of an additional claim is not sufficient nor the 
request for reconsideration. 

Kuper, 97 0. G. 2981, 1901 C. D. 258. 
It must be an action made in good faith, with the purpose 
and effect of making a substantial advance toward closing the 
prosecution of the case. 

Vaughen, 97 0. G. 957, 1901 C. D. 161. 
A mere reassertion of a position is not such an action as will 
save a case from abandonment unless the rules provide for it. 
Grant, 93 0. G. 2532, 1900 C. D. 199. 
Petition may not be signed by the attorney in original case. 

Thomas, 92 0. G. 1035, 1900 C. D. 116. 
Action by an applicant made in good faith, and which is 
such as the condition of the case requires, is sufficient to save 
the ease from abandonment; although it is not completely re- 
sponsive to every requirement made, affidavits under Eule 75 
is such an action as the rule contemplates. 

AVright & vStebbins, 88 0. G. 1161, 1899 C. D. 153. ' 
When upon a requirement of division claims for a process 
were canceled, and an application was limited to claims for an 
article, and a second application for the process was filed while 
the first application was pending,- but not within two years 
from the cancellation of the process claims from the first ap- 
plication. Held, that the process claims were not abandoned 
and the second application was a division of the first. 
Eichardson v. Leidgen, 77 0. G. 153, 1896 C. D. 63. 
When the Examiner makes a definite requirement and a sug- 
gestion, it is the requirement alone that must be acted upon 
within the time limit. 

Hume, 57 0. G. 123, 1891 C. D. 168. 
Amendments of no considerable importance filed the last day 



Rule 171 ABANDONED APPLICATION. 686 

of time limited. Held, that the section so far as it went was 
a proper action, and there was no such utter failure to prose- 
cute within the two years as would warrant a judgment for- 
feiting rights. 

Todd, 49 0. G. 733, 1889 C. D. 217. 
The fact that one party to an interference has taken an ap- 
peal in which counsel of both parties participate does not re- 
lieve the other party from the operation of the rule of limi- 
tations. 

Cruikshank v. Strong, 17 0. G. 511, 1860 C. D. 102. 
The law evidently contemplates official action, either pre- 
liminary or on the merits taken in the regular course of the 
examination of the case. The abandonment of an application, 
or withdrawal of model requires no such action. 

Graham, 3 0. G. 211, 1873 C. D. 34; Lee v. Smith, 5 0. 
G. 58, 1874 C. D. 14. 
The official stamp of the Office is the proper evidence of the 
date of the last official action. 

Blake, 3 0. G. 2, 1873 C. D. 6. 

(4) Time Limit. 

The Supreme Court distinguishes between the construc- 
tive notice incident to the grant of a patent and the 
"actual and specific" notice under this rule. 
Chapman v. Wintroath, 272 0. G. 913. 
Perhaps the year limit ought to run from the time of 
receipt of the notice and not from the time of the Patent 
Office action. 

Time past due to a clerical mistake. Excusable. 
Hinrich, 191 0. G. 1067. 
. Questioned if the one year limitation does not apply to ac- 
tion under Eevised Statute, sec. 4915. 
Wened v. Horine, 191 F. 620. 
If the year ends on Sunday the amendment must be filed 
Saturday. 

182 0. G. 971. 
Eecords of attorney upon which he relied imperfect. Ex- 
cuse insufficient. 

Amigo, 174 0. G. 833. 
Whether or not the ruling that the year runs from a given 
date is correct will not be considered until the case is held to 
have been abandoned, unless in a clear case. 
Inneau, 160 0. G. 1038 (149 0. G. 773). 
Subject-matter of this rule. 

Barrett and Aller, 127 0. G. 847. 
One of the requisites to a favorable decision on the question 



687 ABANDONED APPLICATION. RuIg 171 

of abandonment is that a proper action be filed, upon which ac- 
tion can at once be taken by the Office. 

Eoger, 125 0. G. 2766, 1906 C. D. 528. 
In view of the fact that the proposed amendment would 
place the case in condition for allowance, and the fact that 
the delay over the year is slight, the doubt upon the question 
whether the total delay was unavoidable is resolved in the ap- 
plicant's favor. See also note to Eule 68. 

Eichards, 124 0. G. 627, 1906 C. D. 321. 
Action by the applicant was intentionally delayed until near 
the close of the year following the rejection. In such cases 
the applicant assumes the risk of such accidents as occurred in 
this case (misplaced files), and must bear the* consequences. 
Klussman, 123 0. G. 2311, 1906 C. D. 276. 
Great stress is laid by the applicant on the value and im- 
portance of the invention. These are reasons for giving the 
showing made the most careful consideration, but are not rea- 
sons for relaxing the usual requirements in cases of this kind. 
I am not satisfied that the delay was unavoidable, and there- 
fore I am without authority to regard this case as otherwise 
than abandoned. 

Ilgner, 122 0. G. 1721, 1906 C. D. 182. 
Where the time expired Sunday, March 5, and the Office was 
closed on the 4th, and the amendment would have been re- 
ceived that day, the closing of the Office not being known to 
applicant, case not abandoned. 

Eies, 116 0. G. 2007, 1905 C. D. 211. 
If the last day comes on Sunday, amendment must be filed 
Saturday. 

Weirick, 97 0. G. 1373, 1901 C. D. 183; Koritski & Wipf, 
113 0. G. 1145, 1904 C. D. 498. 
The year begins to run from the last action which tends to 
cause a real advance in the prosecution of the case. 
Naef, 110 0. G. 2016, 1904 C. D. 230. 
Mistake in attorney's office record, but no showing that 
amendment could have been made before. ISTot "unavoidable.'' 
Eaymond, 109 0. G. 1608, 1904 C. D. 113. 
The claims having been twice rejected finally, as involving 
new matter, and the proposed amendment not seeking to rem- 
edy this defect, the case is abandoned. 

Edwards, 108 0. G. 1051, 1904 C. D. 48; Xovotny, 108 
0. G. 1327, 1904 C. D. 57. 
This action was taken within the year, but the case was not 
reached for consideration by the Office until the expiration of 
the vear. Applicant had a right to a reconsideration. 
Lovejoy, 108 0. G. 1053, 1904 C. D. 52. 



Rule 171 ABANDONED APPLICATION. 688 

The word "unavoidable" in the statute means more than that 
to act would have been inconvenient. Since the delay in this 
case is attempted to be explained on the ground that Mar- 
coni did not furnish the necessary information, it cannot be 
held that the delay was unavoidable in the absence of a show- 
ing by him of good reasons why he did not furnish the infor- 
mation. 

Marconi, 108 0. G. 796-7, 1904 C. D. 31. 
The amendment was not accompanied by a showing as to 
why it was not presented before; it was not therefore such 
proper action as the case required to keep it from abandon- 
ment. 

Lay, 107 0. G. 3337, 1903 C. D. 501. 
The petitioner may not have the application revived and a 
limit of six months set for him to amend. 
Miller, 105 0. G. 3057, 1903 C. D. 383. 
An assignee refused a revival of the application because no 
excuse was given for the first nine months of the delay. 
Miller, 105 0. G. 3057, 1903 C. D. 383. 
After rejection by the Examiners-in-Chief, the claims in 
question were canceled, and more than a year after said re- 
jection. An amendment was filed attempting to reinstate the 
abandoned claims. Held, that the amendment cannot be en- 
tered. The case was abandoned. 

Oviatt & Dean, 107 0. G. 369, 1903 C. D. 419. 
Time limit for appeal begins to run from time of definite 
final rejection. 

Kuhlewind, 101 0. G. 3107, 1903 C. D. 481. 
If the last day falls on Sunday, action must be taken on 
Saturday. 

Beecher, 101 0. G. 1133, 1903 C. D. 384. 
See notes to Eules 65 and 68. 

Bursen, 81 0. G. 3346, 1897 C. D. 196. 
The limitation does not run while an interference is pend- 
ing. 

Taylor v. Shreffler, 34 0. G. 1175, 1883 C. D. 63. 
The day of the last action of the Office is excluded in the 
computation of the two years. 

Musser, 16 0. G. 858, 1879 C. D. 353. 
There is no rule which excludes the filing of any amend- 
ment more than two years after the filing of an application 
that would ever be admissible at all. There is no limit of time 
restricting amendments except that provided in the statute de- 
fining abandonment, and that has no relation to the character 
of the amendment or other matter presented. 
Dodge, 3 0. G. 179, 1873 C. D. 303. 



689 ABANDONED APPLICATION. Rule 171 

(5) Delay Within the Limit. 

See Chapman v. Wintroath, 272 0. G. 913. 

In this exceptionally complex art the Office has found itself 
unable to bring about an improvement (Automatic Tele- 
phones). Amendments are delayed in many instances until 
the end of the period allowed by law^ and when applications 
are passed to issue they frequently are forfeited and renewed 
with further amendment, and their slow prosecution is re- 
sumed. The only possible relief from conditions which have 
become intolerable is to force an application to patent or aban- 
donment whenever an opportunity presents itself. 
Dyson, 333 0. G. 755. 
The record seems to show a deliberate attempt to prolong 
the prosecution of the case, and under the circumstances hav- 
ing taken advantage of a technical application of the rules. 
Applicant is not in a position to complain of a like applica- 
tion by the Office. 

Copelana, 140 0. 0. 1207. 
A person has a perfect right to delay action until near the 
end of the year, but in so doing he risks a delay due to a mis- 
take. 

Grant, 128 0. G. 885. 
When an applicant intentionally delays to the last of the 
time limited, and by mistake the application is not ffied until 
the day after time limited, he is not entitled to relief. 
Clausen, 118 0. G. 838, 1905 C. D. 367. 
If there was no excuse why applicant did not act during the 
first six months, or his attorneys during the second six 
months, the case held abandoned, notwithstanding excuses for 
the rest of the time. 

Simon, 118 0. G. 838, 1905 C. D. 366. 
Delay which is within the time limited will not be consid- 
ered unfavorable to a contestant. 

Jones V. Starr, 117 0. G. 1495, 1905 C. D. 694, 26 App. 
D. C. 64. 
Where the record shows that the applicant is in the habit 
of waiting almost the full statutory period before amending, 
he is not in position to rely on any matters of equity when a 
question is raised whether he has acted in time, but only upon 
his strict technical rights. 

:N[aef, 115 0. G. 2135, 1905 C. D. 137. 
The applicant's rights are not prejudiced by any delay less 
than a year. 

Booth, 113 0. G. 2216,- 1904 C. D. 558._ 
Where a party relies upon his technical rights to delay, he 



Rule 171 ABANDONED APPLICATION. 690 

should not be heard to complain where he fails to meet the re- 
quirements. 

Kies, 113 0. G. 1147, 1904 C. D. 501. 
It is the right of an applicant to wait until the last of the 
time allowed him; but when he continually does so he is not 
in position to ask for leniency in the application of the rule 
against delay. 

Pietzner, 103 0. G. 3171, 1903 C. D. 142. 
It is settled by the Supreme Court that so long as a party 
complies with the law in prosecuting his application, no delay 
in the Office can be regarded as unreasonable and as operating 
as a forfeiture of his rights. 

Osborn v. Hotsapillar, 103 0. G. 1397, 1903 C. D. 47. 
If applicant waits till the latter part of the time limit he 
takes all risks. 

Beecher, 101 0. G. 1133, 1903 C. D. 384; Smith, 101 0. 
G. 1369, 1903 C. D. 387. 
When an applicant waits until the last day of the year to 
file an amendment he assumes all risks, and an action which 
would be insufficient if made earlier cannot be held to be suffi- 
cient for this reason. Said of an amendment which was re- 
fused because it would require division. The circumstances of 
this case are such as to entitle the applicant to favorable con- 
sideration if he will promptly file a proper amendment, accom- 
panied bv petition for revival. 

Morrison. 99 0. G. 3969, 1903 C. D. 336. 
In view of a suggestion that the inventor is in fault for any 
avoidable delay, the Court says : "The inventor does not deter- 
mine the measure of his right or of his obligations. The law 
determines that for him, and if tlie government thinks that 
more speed is desirable in the interests of the public it should 
change the law." If an inventor is allowed two years to take 
an appeal, he may wait till the last day of the two years — 
same case. 

Crown Cork & Seal Co. v. Aluminum Stopper Co., 9G 0. 
G. 3576, 1901 C. D. 450. 
Must be unavoidable for the entire time. 

Warren, 96 0. G. 3410, 1901 C. D. 137, 33 App. D. C. 
367. 

A request for further information not sufficient to save 
case from abandonment. The Office will not scrutinize the 
record to find a way of saving an application from abandon- 
ment that has already been pending for more than eleven 
3^ears, especially where the art during that period has rapidly 
developed, and where the grant of a patent upon the claims 
now in the case might be a menace to more diligent inventors. 

Hunter, GQ 0.^ G. 1449, 1894 C. D. 34. 



691 REVIVAL OF APPLICATION. Rule 172 

(6) Formal Abandonment. 

The signature of the assignee is necessary. 

Weideman, 81 0. G. 3245, 1897 C. D. 194. 
Whether a declaration of abandonment shall be put in a set 
form of words is a matter in the discretion of the Office. 
Lassell, 29 0. G. 861, 1884 C. D. 66. 
It is thought that an erasure of all the claims, without sub- 
stituting others, is an abandonment of the application. 

Lassell, 29 0. G. 861, 1884 C. D. 66; Lassell, 28 0. G. 
1274, 1884 C. D. 42. 
One of the two joint inventors cannot abandon the joint in- 
vention without the consent of the other. 

Sawyer & Mann v. Edison, 25 0. G. 597, 1883 C. D. 80. 

(7) Additional Cases. 

Subject-matter of this rule. 

Kinsman v. Strohm, 120 0. G. 2127, 31 App. D. C. 581; 
Berg, 120 0. G. 903; Skinner v. Murray, 107 0. G. 
542, 1903 C. D. 429; Bowles, 103 0. G. 429, 1903 C. 
D. 95; Eaymond, 99 0. G. 1386, 1902 C. D. 170; Sib- 
bald V. Cassidy & Smith, 61 0. G. 563, 1892 C. D. 
214; Funston, 49 0. G. 1044, 1889 C. D. 224; Hamil- 
ton V. Fisher, 1871 C. D. 371. 

Rule 172. Revival of Application. 

Before an application abandoned by failure to com- 
plete or prosecute can be revived as a pending appli- 
cation it must be shown to the satisfaction of the 
Commissioner that the delay was unavoidable. 

Eev. Stat., sec. 4894. 

HISTORY. 

Substantially Eule 166 of 1879. 

CONSTRUCTTONS. 
Revival of Application. 
See notes to Rule 171. 

Amendment must reach the Patent Office in time. It is not 
sufficient that it was mailed in time. 
James, 189 0. G. 1032. 
A case will not be revised merely for the sake of giving a 
date to a second application. 
Girrardill, 181 0. G. 1073. 



Rule 172 EEvivAL of application. 692 

The mere failure to file an amendment which was prepared 
at the end of the year from the Office, action does not, in my 
opinion, constitute any sufficient showing of unavoidable de- 
lay which would warrant the revival of an application within 
the provision of Section 4894 of Eevised Statutes. 
Ciofi, 137 0. G. 1238. 
The Commissioner cannot reinstate an application formally 
abandoned by the applicant himself. 
Hirth, 137 0. G. 977. 
A person may not delay amending because if he does amend 
his opponent will have access to the amendment under Eule 
108. 

Digy & Fowler, Jr., 132 0. G. 1837. 
That claims under Eule 96 were not suggested is no excuse 
for failure to amend. 

McKee, 130 0. G. 980. 
That a case was inadvertently crossed oflE the attorney's 
docket, not sufficient excuse where it appears that delay until 
near the close of the period was intended. 
Duryea, 128 0. G. 1291. 
The showing relates to matter outside the Office, and is not 
verified nor has a proper amendment been filed. Delay will 
not be held unavoidable under these circumstances. Moreover, 
the excuse made does not cover the whole period. 
Myers, 123 0. G. 1663, 1906. C. D. 263. 
Matter tending to excuse the latter part of the delay is not 
sufficient. 

Marburg, Jr., 121 0. G. 687, 1906 C. D. 98. 
Delay in transmission through the mails from a foreign 
country unverified statement. 

Botzky, 121 0. G. 338, 1906 C. D. 94. 
An action before the Primary Examiner consisting of an ap- 
peal, held proper, notwithstanding it did not obviate the ob- 
jection of the Examiner that it defined the article in the claim 
by reference to its mode of manufacture. 

Warren, 120 0. G. 2755, 1906 C. D. 87, 30 App. D. C. 308. 
A petition must be accompanied by an action. 
Eichardson, 120 0. G. 2573, 1906 C. D. 83. 
A delay of four years difficult to excuse. 

Gironcoli, 120 0. G. 2753, 1906 C. D. 82. 
The fact that the amendment was mislaid by attorney does 
not show unavoidable delay. 

Block, 1J9 0. G. 963, 1905 C. D. 493. 



693 EEviVAii OF APPLICATION. Rule 172 

The contention on petition that the alleged final rejection 
was 23remature must be made within the year. 
Eead, 119 0. G. 337, 1905 C. D. 458. 
Mistake of attorney as to date not sufficient excuse. 

Hallot, 118 0. G. 592, 1905 C. D. 351. 
Inventor prosecuting his own case, did not receive first no- 
tice; second notice reached him when he was ill, from which 
illness he died; his representatives acted promptly. 
Sellers, 118 0. G. 370, 1905 C. D. 336. 
Delay may not be excused because applicant was trying to 
ipaprove his invention. The improvement cannot be included 
in the case. 

Raymond, 118 0. G. 269, 1905 C. D. 334. 
Only the Commissioner is authorized to pass upon the suffi- 
ciency of an excuse. ' The Examiner may not do so. 
Eeis, 116 0. G. 2007, 1905 C. D. 211. 
Delay in acting upon an application is not to be excused for 
the purpose of permitting the applicant to devise means for 
making the delayed invention practical and useful. The law does 
not contemplate the filing of applications upon incomplete or 
useless inventions. 

Murphy, 115 0. G. 1848, 1905 C. D. 132. 
The applicant must present his petition accompanied by affi- 
davits setting forth excuse for delay. He must do this prompt- 
ly, and may not wait a year as with an amendment. Delay in 
presenting the petition must also be excused. 
Naed, 115 0. G. 1583, 1905 C. D. 121. 
A change in practice will not revive an abandoned case, but 
a change before it becomes abandonment may prevent its be- 
coming abandoned. 

Thompson, 113 0. G. 2504, 1904 C. D. 566. 
Delay in presenting a petition for relief against the aban- 
donment should be taken into consideration. 

Koritski & Wipf, 113 0. G. 1145, 1904 C. D. 498. 
It is necessary to see that amendments are received by the 
■Office. The fact that the petitioner cannot file a new case by 
reason of foreign patents is not alone sufficient to excuse de- 
lay. 

Stuckgold, 106 0. G. 545, 1903 C. D. 307. 
An application allowed to lapse because, under the law then 
in force, a foreign patent was a bar, cannot be reinstated, not- 
withstanding the law has been changed so that it would re- 
move the bar but for abandonment. 

Casalonga, 105 0. G. 261, 1903 C. D. 212. 
It is said by the applicant that he is barred from filing a new 



Rule 172 EEvrvAL of application. 694 

application because of foreign patents. That fact might be 
sufficient to turn the scale in a doubtful case, but is not in it- 
self a reason for holding that a case is not abandoned. 
Pietzner, 103 0. G. 2173, 1903 C. D. 142. 
The failure to act within the last few weeks was unavoid- 
able, but they constitute only a small part of the delay. The 
law says that the delay must be unavoidable, and not merely 
that the last few weeks must be so. 

McElroy, 101 0. G. 2823, 1902 C. D. 467. 
The Commissioner has no discretion in reviewing an aban- 
doned application unless it appears to him that the abandon- 
ment was caused by unavoidable delay. 

Beecher, 101 0. G. 1132, 1902 C. D. 384. 
A wrong entry on office books of attorney no excuse. 

Beecher, 101 0. G. 1132, 1902 C. D. B84. 
The existence of a bar to the filing of a new application is 
entitled to weight, and woiild justify this Office in resolving 
doubts as to the sufficiency of the showing in the applicant's 
favor on a request for a revival, but it does not alone war- 
rant the revival of any case. 

Bohlecke, 97 0. G. 2743, 1901 C. D. 239. 
Delay cannot be considered unavoidable where it is due to 
the negligence of the attorney. 

Collins, 97 0. G. 1372, 1901 C. D. 181. 
Petitions for revival will not be docketed for hearing, but 
will be decided upon facts presented in the petition. 
92 0. G. 561. 
Showing must cover the entire- period of delay. 

Heine, 64 0. G. 1006, 1893 C. D. 106. 
Excuse must cover entire period. 

Clarke, 61 0. G. 286, 1892 C. D. 208. 
The abandoned application of a foreign applicant will not 
be revised upon a showing that the two years' limit was al- 
lowed to expire without action solely through the inadvertence 
of the Associate Attorney's clerk. 

Ralymaeckus, 60 0." G. 1749, 1892 C. D. 194. 
Misunderstanding of attorneys not sufficient to excuse delay. 

Macphail, 56 0. G. 1062, 1891 C. D. 134. 
Excuse for delay must cover entire time. Neglect of attor- 
neys not sufficient. 

Murray, 56 0. G. 1060, 1891 C. D. 130; Edison, 56 0. G. 
1061, 1891 C. D. 133, 30 App. D. C. 321. 
A matter under this rule is addressed wholly and solely to 



695 NEW APPLICATION. Rule 173 

the discretion of the Commissioner, but by the discretion of 
the Commissioner is to be understood his judicial discretion. 
Cliapman, 29 0. G. 950, 1884 C. D. 72. 
If a party seeks to escape from the operation of the limita- 
tion he must establish the utmost good faith and diligence in 
his conduct. 

Mayor, 113 0. G. 912, 1878 C. D. 60; Chapman, 29 0. G. 
950, 1884 C. D. 72. 

Rule 173. New Application. 

"When a new application is filed in place of an 
abandoned or rejected application, a new petition, 
specification, oath, and fee will be required; but the 
old drawing, if suitable, may be used upon the filing 
of suitable permanent photographic copies thereof. 

CONSTRUCTIONS. 
A canceled sheet from the original application may be used. 

Scheiner, 259 0. G. 383. 
'So long as he can make the prescribed oath, an applicant 
may file identical applications until the patience of the Office 
is exhausted. 

Barrett v. Hart, 256 0. G. 225. 
The drawings from an abandoned case may not be used in a 
new application. 

Farnham, 114 0. G. 2090. 
Eenewed application seems to be a continuation of the for- 
mer application, and the record should contain a reference to 
such former application. 

Lewis V. Unger, 106 0. G. 543. 
Where claims were allowed on appeal, then the case formally 
abandoned and another application substituted. In the allow- 
ance of the latter an entry should be made referring to the 
first case. 

Lewis & linger, 106 0. G. 543. 
Petition may not be signed by the attorney in original case. 

Thomas, 92 0. G. 1035. 
The existence of a bar to the filing of a new application is 
entitled to weight, and would justify this Office in resolving 
doubts as to the sufficiency of the showing in the applicant's 
favor on a request for a revival, but it does not alone warrant 
the revival of any case. 

Bohlecke, 97 0. G. 2743. 



Rule 174 roRFEiTED APPLiCATioisr. 696 

Rule 174. Forfeited or Withheld Application. 

A forfeited application is one upon which a patent 
has been withheld for failure to pay the final fee 
within the prescribed time. (See Rule 167.) 

Rule 175. New Application after Non-Payment of 
Final Fee. 

"When the patent has been withheld by reason of 
nonpayment of the final fee, any person, whether in- 
ventor or assignee, who has an interest in the inven- 
tion for which the patent was ordered to issue may 
file a renewal of the application for the same inven- 
tion ; but any renewal application must be made within 
two years after the allowance of the original applica- 
tion. Upon the hearing of the new application aban- 
donment will be considered as a question of fact. 

Eev. Stat., sec. 4897. 

CONSTRUCTIONS. 

The renewal application should be accepted when made by 
the assignee within 2 years and 9 months. 

(War Eegulation Oct. 6, 1917) Tschunke, 266 0. G. 596. 
Where an intent to continue is manifest, or is proven, the 
question is whether the specification of the earlier was suffi- 
cient as a basis for the claims ultimately founded on the later 
application. 

General Electric Co. v. Continental Fibre Co., 268 0. G. 
193. 
An applicant may ordinarily make a new election in a re- 
newal application and prosecute claims to a species other than 
that originally elected, provided that such species is fully 
disclosed in the original application. 
Prouty, 264 0. G. 533. 
All right to keep the reallowed application alive expired 
with the failure to pay the final fee within six months of the 
second allowance. 

Barrett v. Hart, 256 0. G. 224. 
M.'s patent was issued between the dates of T.'s forfeiture 
and application for renewal. Ko testimony taken as to aban- 



697 APPLICATION AFTER XON-PAYMENT. Rule 175 

donment; and the rene^val by the Commissioner rebuts any 
such presumption. May have filing date. 
Murphy v. Thompson, 246 0. G. 825. 
The application has been once allowed, forfeited and re- 
newed. A second forfeiture would presumably result in aban- 
donment. 

Dyson, 233 0. G. 755. 
That an interfering application was filed during the period 
of forfeiture apparently is not sufficient to make out abandon- 
ment. 

Gehring et al. v. Burry, etc., 225 0. G. 371. 
Where W., with knowledge that B. was in the field, delib- 
erately withheld his invention from the market, and neglected 
to renew his forfeited application or to reinsert his claims for 
a patent until practically the end of the period allowed, this 
amounted to an abandonment of the invention. (Dec. Ex. -in- 
Chief.) 

Barbar v. Wood, 207 0. G. 299. 
-Attorney may sign petition for renewal. 

Le Brow v. Nix, 177 0. G. 771, 180 0. G. 1139; per con- 
tra, ex parte Thomas, 92 0. G. 1035. 

The Commissioner has no authority to accept a fee after 
two years. 

159 0. G. 197. 
The question of abandonment is one to be determined upon 
proof of the facts and circumstances, and will not be pre- 
sumed from laches in filing the renewal application, although 
it may be within the power of the Commissioner, whenever he 
entertains a doubt as to whether there has been an abandon- 
ment to require an explanation of the delay. 
Cutler V. Leonard, 136 0. G. 438. 
An opinion of the x\ssistant Attorney-General for the In- 
terior Department relating to the right to file a second re- 
newal application rendered upon request of the Commission of 
Patents, might properly have been disregarded, and the custom 
which obtained for 30 years, of granting such, be persisted in. 
The appeal on such questions is to the Court and not to the 
Secretary. 

In re Sambert, 135 0. G. 1584. 
For all these reasons, the practice is restored which prevailed 
prior to 1894, of allowing more than one renewal of a for- 
feited application provided that it is made within two years 
following the date of allowance of the original application. 
Not retroactive. 

Sumbort, 135 0. G. 1581. 



Rule 175 APPLICATION AETER NON-PAYMEIsrT. . 698 

Only one renewal permissible, or, if allowable, the final one 
must be within two years of the original. 

Weston Electrical Inst. Co. v. Empire, 131 F. E. Co., 1894 
C. D. 111. 
But a new application may be made. 

1895 C. D. 95. 
The practice of refusing to entertain a second renewal ap- 
plication is founded upon opinions of the Attorney-General, 
published in 69 0. G. 639, 1894 C. D. Ill, and in 70 0. G. 
493, 1895 0. G. 95, which are controlling. 
Theodor and Carl Weil, 122 0. G. 352. 
The payment of the fee alone is not sufficient. 

Eyan, 117 0. G. 599. 
Last sentence sufficient authorization for signing and prose- 
cuting renewal application. 
Agee, 101 0. G. 1609. 
But the law does not favor forfeiture, and it being a question 
of fact whether there has been abandonment, all reasonable 
doubt must be solved in favor of the patent. 
96 0. G. 2576. 
An application cannot be renewed until it has become for- 
feited by lapse of time. 

Nicholson, 52 0. G. 310; Schulz, 111 0. G. 2494. 
As, between an applicant resting upon a mere constructive 
reduction to practice, especially where his application is a re- 
newal of a forfeited application, and a party who is really the 
first inventor, and to whom a patent has been issued for the 
invention. Held, that priority must be found for the patentee, 
C. of A. D. of C, 90 6. G. 223. xA.bove cases refer to 
Eules 174, 176, 177 and 178. 
Although the third renewal of an application was received, 
acted upon the merits, and pending at the date of the Sec- 
retary's decision denying a right to a second renewal. Held, 
under the decision, that application cannot be prosecuted. (See 
C. D. 1894, 111; 69 0. G. 639.) 

Vulte, 1895 C. D. 1, 70 0. G. 631. 
The papers in an application, forfeited and abandoned by 
operation of law under Sec. 4897, cannot be withdrawn from 
the case to be used in a new application. 
A^ilte, 1895 0. D. 1, 70 0. G. 631. 
Under Sec. 4897 E. S., a second application for renewal can- 
not be made, but a new application for a patent can be made. 
1895 C. D. 95, 70 0. G. 493. 



699 OLD APPLICATION PAPERS. Rule 176 

The right of an applicant to renew a forfeited application 
under Sec. 4897 is exhausted when once exercised. 
1894 C. D. Ill, 69 0. G. 639. 
It is not sufficient that the final fee was mailed within the 
6 months it must have been received. 

Eiley, 1891 C. D. 136, 56 0. G. 1203. 
There is no authority of law permitting the renewal of an 
application, or the acceptance of the fee for such renewal, be- 
fore the date on which the application would actually become 
forfeited for non-payment of the final fee. 
Mcholson, 1890 C. D. 113, 53 0. G. 310. 
The present application is by law, regardless of the wishes 
of the applicant, a continuation of the prior application. There 
can be no question but that the applicant may assert his earlier 
application to avoid bars, such as public use and prior inven- 
tion, that might operate against the latter application. (Cases 
cited.) 

Taylor, Jr., 44 0. G. 1365. 
The 25th section (laws of 1870) gives to the Commissioner 
no power to revive a forfeited application when more than two 
years have elapsed since the date of its allowance. It is then 
absolutely abandoned, with no provision for reconsideration, 
and its subject-matter becomes the property of the public. 

McCuUey, 74 C. D. 76; contra Livingston, 81 C. D. 43; 
Sebald v. Cassidy & Smith, 61 0. G. 563, 1893 C. D. 
333. 
Subject-matter of this rule. 

Barrett, 1891 C. D. 135, 56 0. G. 930 ; Ostergren v. Trip- 
ler, 95 0. G. 838; Mvers, 1891 C. D. 6, 54 0. G. 365; 
Hopkinson, 1891 C. JD. 4, 54 0. G. 364. 

Rule 176. Old Application Papers may be Used in 
Renewal. 

In a renewal the oath, petition, specification, draw- 
ing, and model of the original application may be 
used; but a new fee will be required. The renewal 
application will not be regarded for all purposes as 
a continuation of the original one, but must bear date 
from the time of renewal and be subject to examina- 
tion like an original application. 



Rule 177 ABANDONED APPLICATION. 700 

CONSTRUCTIONS. 

Petition not defective because it did not specify the original 
petition as one of the papers to be used. 

Le Brow v. Nix, 177 0. G. 771, 180 0. G. 1139. 
A second allowance of a claim after forfeiting adds to the 
presumption as to its patentability. 
Hay, 139 0. G. 241. 
If new matter is introduced, the old drawings may not be 
used. 

Noyes, 122 0. G. 2062. 
There must be some form of petition; the payment of the 
fee alone is not sufficient. 
Eyan, 117 0. G. 599. 
New claims may be presented. 

Barrett, 1891 C. D. 154, 56 0. G. 1564. 
From the first the Office has accepted the payment of a new 
fee and a request that the patent issue upon the old papers 
as a sufficient new filing, or refiling, within the spirit of the 
law. 

Livingston, 1881 C. D. 42. 
Subject-matter of this rule. 
Agee, 101 0. G. 1609; Nelson, 1897 C. D. 174, 81 0. G. 
1781; Brown v. Guild, 6 0. G. 392; Sexton, 1876 C. D. 
251. 

Rule 177. Forfeited and Abandoned Applications. 

Forfeited and abandoned applications will not be 
cited as references. 

Rule 178. Notice of Subsequent Applications. 

Notice of the filing of subsequent applications will' 
not be given to applicants while their cases remain 
forfeited. 

Rule 179. Copies. 

Copies of the files of forfeited and abandoned ap- 
plications may be furnished when ordered by the Com- 
missioner. The requests for such copies must be pre- 
sented in the form of a petition properly verified as 



701 COPIES. Eule 179 

to all matters not appearing of record in the Patent 
Office. (See Form 35.) 

CONSTRUCTIONS. 

It is not the practice to split up cases and furnish copies of 
parts. 

Marsh Engineering Co., 193 0. G. 510. 
The certificate of a judge is necessary. 

Standard Adding Machine Co., 160 0. G. 357. 
The trustee in bankruptcy has no such title to the applica- 
tions as would justify his request for access to and copies 
thereof. Whether he has such an interest as would justify his 
being allowed to inspect them can only be decided after a 
hearing upon a petition duly filed, with proof of service upon 
the owner, in accordance with the practice set out in the de- 
cisions in the cases of Commercial Mica Co., 129 0. G. 479 
and Bullock Electric Mfg. Co., 129 0. G. 1611. 
In re Ives, 149 0. G. 309. 
Where the patent in suit refers to an abandoned application, 
parties entitled to obtain copies. 

Marvin Estate Co., 148 0. G. 571. 
An order of the Court advisable but not necessary. 

Marvin Estate Co., 148 0. G. 171. 
A petition to inspect and obtain copies of an abandoned 
application of which patent in suit seems to be a division. 
The abandoned application of Eeed, No. 397,553, is a part 
of the proceedings leading to the grant of the patent in suit, 
and for that reason virtually part and parcel of said patent. 
Petition granted. 

Yaeiium Specialty Co., 142 0. G. 1114. 
The practice requires that access to pending applications 
will be refused except to parties showing a proper interest 
therein, and the mere allegation of an attorney that the com- 
pany for which he is a counsel desires to defend a suit brought 
on a patent divided out of such application is not sufficient 
showing of interest. 

In re Miami Cycle & Mfg. Co., 136 0. G. 1067. 
Petition refused because references in patent was not of such 
a nature as to waive right of secrecy, because not accompanied 
by certificate of court; because not served on assignee of in- 
vention. (Service on attorney not sufficient.) 

Commercial Mica Co., 129 0. G. 479 ; The Bullock Elec- 
tric Mfg. Co., 129 0. G. 1611. 
The petition, however, is not accompanied by proof of service 



Rule 179 COPIES. 702 

upon the applicai^t. For this reason the petition is dismissed 
"without prejudice. 

Standard Computing Scale Co. v. Stimpson, 125 0. G. 
2047. 
Where the patent purports to be a continuation of an earlier 
application^ it is to be presumed that the right of the public 
to inspect the earlier application was affirmatively determined 
by the issue of the patent with such reference therein; but 
where the patent contains no reference to earlier applications, 
the patentee should be given opportunity to produce such rea- 
sons as he may have at his command why access should not 
be permitted. 

Lanning, 124 0. G. 2902. 
Copy of application of defeated party to an interference 
granted upon a petition duly served upon the applicant, no ob- 
jection being offered, and a court stating that it would be ad- 
mitted in evidence. 

Benedict v. Morsell, 116 0. G. 874. 
An application was required to be abandoned before patent 
allowed. A formal abandonment was filed. Held, that the 
record of the abandoned case was part of the proceeding lead- 
ing to the grant of the patent, and as such accessible to the 
public. 

Doman, 115 0. G. 804; Heard, 114 0. G. 2381. 
It is the settled policy of the Office to preserve the various 
parts of complete applications as records of the cases in which 
they are originally filed. (Ayres, 51 0. G. 1944; Lawson, 101 
0. G.; Priest, 103 0. G. 428. Eule 173.) 
Farnhan, 114 0. G. 2090. 
Petitioner wished a copy of the TJ. S. application if there 
was one, for use in defense against a French patent. Held, that 
the showing was insufficient. 
Taupenct, 113 0. G. 1418. 
To obtain copies of an abandoned application there must be 
shown some necessary connection between the applications and 
the patent upon which suit is brought. 
Rusk, 113 0. G. 1418. 
If the files are referred to in a record, the precise place 
should be specified. 

Fowler, 113 0. G. 549. 
Copies of an abandoned application referred to in a patent 
in litigation furnished upon affidavit quoted, the patentee not 
appearing to oppose the motion. 

Standard Plunger Elevator Co., 112 0. G. 1480. 
Abandoned application referred to in a suit for infringe- 



703 DISCLAIMER OF INVENTION. Rule 181 

ment. Judge certified that copy would be received in evi- 
dence. Petition granted. (109 0. G. 1885.) 
Ashtabula Telephone Co., 110 0. G. 860. 
Eequests for pending or abandoned applications referred 
to in patents should be supported by a showing of reasons why 
they are desired, together with proof of service upon the appli- 
cant of the papers constituting the request and showing. 
Dyar, 106 0. G. 1508. 
The request is defective, in that it is not sufficiently ex- 
plicit. The particular application, copies of which it is de- 
sired to obtain, is not specified. 
McWilliams, 100 0. G. 3774. 
Abandoned applications on file in the Patent Office are not 
open to public inspection. 

Wycofi, 1892 C. D. 108, 59 0. G. 1104. 
Abandoned applications on file in the Patent Office are not 
open to public inspection. 

Wycoff, 1892 C. D. 108, 54 0. G. 1104. 
A petition, accompanied by a reasonable suggestion of their 
necessity for purposes of evidence, for certified copies of an 
abandoned application, will be granted, though permission 
to inspect the abandoned cases in the Patent Office will be re- 
fused. 

Fowler and Fowler, 1889 C. D. 209, 49 0. G. 562. • 

EXTENSIONS. 

Rule 180. Extensions. 

Patents can not be extended except by act of Con- 
gress. 

Rev. Stat., sec. 4924. 

DISCLAIMERS. 

Rule 181. Disclaimer of Parts of Inventions not New. 

Whenever, through inadvertence, accident, or mis- 
take, and without any fraudulent or deceptive inten- 
tion, a patentee has claimed as his invention or dis- 
covery more than he had a right to claim as new, his 
patent will be valid for all that part which is truly 
and justly his own, provided the same is a material 



Rule 181 DISCLAIMER OF INVENTION. 704 

or substantial part of the thing patented; and any 
such patentee, his heirs or assigns, whether of the 
whole or any sectional interest therein, may, on pay- 
ment of the fee required by law ($10), make dis- 
claimer of such parts of the thing patented as he or 
they shall not choose to claim or to hold by virtue of 
the patent or assignment, stating therein the extent 
of his interest in such patent. Such disclaimer shall 
be in writing, attested by one or more witnesses, and 
recorded in the Patent Office; and it shall thereafter 
be considered as part of the original specification to 
the extent of the interest possessed by the claimant 
and by those claiming under him after the record 
thereof. But no such disclaimer shall affect any ac- 
tion pending at the time of filing the same, except as 
to the question of unreasonable neglect or delay in 
filing it. 

CONSTRUCTIONS. 

The power to disclaim is a beneficial one, and ought not to 
be denied except where it is resorted to for a fraudulent and 
deceptive purpose. We think there is no force in the criticism 
that a disclaimer may not extend to a part of the specification 
as well as to a distinct claim. 

The Carnegie Steel Co., "Ltd., v. The Cambria Co., 99 0. 
G, 1870, 1902 C. D. 592. 
This -rule does not refer to disclaimers which are filed to 
make an application conform to the state of the art. (V. E. 
182.) 

Murdoch, 1879 C. D. 260. 
The effect of a disclaimer is entirely neutralized when, in 
its substance, it is contradictory of the claim, and not merely 
explanatory of it. 

Hobson, 1872 C. D. 20. 
A disclaimer should specify by verbal description the par- 
ticular thing or construction to which it was designed to ap- 
ply. It is not sufficient to disclaim all things, arrangements 
and combinations shown and described in a certain patent. 
Eichardson, 1871 C. D. 303. 



705 ^ ASSIGNABILITY. Rule 183 

Rule 182. Different Kinds of Disclaimers. 

The statutory disclaimers treated of in Rule 181 
are to be distinguished from those which are em- 
bodied in original or reissue applications, as first 
filed or subsequently amended, referring to matter 
shown or described, but to which the disclaimant does 
not choose to claim title, and also from those made 
to avoid the continuance of an interference. The 
disclaimers falling within this present rule must be 
signed by the applicant in person and require no fee. 
(See Rule 107. For forms of disclaimers see appen- 
dix, Forms 28 and 29.) 

ASSIGNMENTS. 
Rule 183. Assignability of Patents. 

Every patent or any interest therein is assignable 
in law by an instrument in writing; and the patentee 
or his assigns or legal representatives may, in like 
manner, grant and convey an exclusive right under the 
patent to the whole or any specified part^ of the 
United States. 

Eev. Stats., sec. 4898. 

CONSTRUCTIONS. 

See Rules 5, 6 and 26. 

It seems to be plain that legal title to a patent does not 
completely vest in the assignee until the patent is issued. Be- 
fore that, an assignment of the right to a patent gives the as- 
signee merely legal title to such right as the patentee may have. 
As between the assignee and the U. S. these rights are equi- 
table. 

Thompson v. Automatic Fire Protection Co., 197 F. 754. 

Inasmuch as M. made a legal transfer of his inchoate right 
to the K. K. Mfg. Co., and requested the patent to issue to 
that Company, and the H. R. Miller Mfg. Co. is adjudged a 
bankrupt, the title of the bankrupt to the iuchoate right is 
vested, by operation of law, in the trustee in bankruptcy under 
tlie provision of Bankruptcy Act, and the trustees in bank- 



Rule 184 VESTED interest. 706 

ruptcy having made a sale of the property in question to the 
petitioner, and that sale having been approved by a court of 
competent jurisdiction, it is held that the petitioner should 
be recognized in the prosecution of the above entitled applica- 
tions, and that when patents are granted thereon they shall 
issue to the petitioner as assignee. 

Slibler, 177 0. G. 1044. 
Apparently a request to issue the patent to the assignee is 
not necessary to the completeness of the assignment. 

Wende v. Horine, 191 F. 620. 

Rule 184. May be Vested in Whom. 

Interest in patents may be vested in assignees, in 
grantees of exclusive territorial rights, in mortgages, 
and in licenses. 

(a) An assignee is a transferee of the whole in- 
terest of the original patent or of an undivided part 
of such whole interest, extending to every portion of 
the United States. The assignment must be written 
or printed and duly signed. 

(b) A grantee acquires by the grant the exclusive 
right, under the patent, to make, use, and vend, and 
to grant to others the right to make, use, and vend, 
the thing patented within and throughout some speci- 
fied part of the United States, excluding the patentee 
therefrom. The grant must be written or printed and 
be duly signed. 

(c) A mortgage must be written or printed and be 
duly signed. 

(d) A licensee takes an interest less than or dif- 
ferent from either of the others. A license may be 
oral, written, or printed, and if written or printed, 
must be duly signed. 

CONSTRUCTIONS. 

The Supreme Court has said (Pope Mfg. Co. v. Gormully, 
59 0. Gr. 471) that part of the claims of a patent cannot be 
assigned. 

McCormick, 116 0. G. 1183-1184. 



707 EECOEDING. Rule 186 

Subject-matter of this rule. 

Hunter, 1891 C. D. 122, 56 0. G. 929. 

Rule 185. Validity of Assignment. 

An assignment, grant, or conveyance of a patent 
will be void as against any subsequent purchaser or 
mortgagee for a valuable consideration without notice 
unless recorded in the Patent Office within three 
months from the date thereof (or prior to such subse- 
quent purchase or mortgage. Proposed Law H. R. 
11984). 

If any assignment, grant, or conveyance of any 
patent shall be acknowledged before any notary public 
of the several States or Territories or the District of 
Columbia, or any commissioner of the United States 
circuit court, or before any secretary of legation or 
consular officer authorized to administer oaths or 
perform notarial acts under section 1750 of the Re- 
vised Statutes, the certificate of such acknowledgment, 
under the hand and official seal of such notary or 
other officer, shall be prima facie evidence of the exe- 
cution of such assignment or conveyance. 

Rev. Stat., sec. 4898. 
Act Mar. 3, 1897. 

CONSTRUCTIONS. 

Subject-matter of this rule. 
Funiston, 1889 C. D. 225. 

Rule 186. Recording. 

No instrument will be recorded which is not in 
the English language and which does not, in the judg- 
ment of the Commissioner, amount to an assignment, 
grant, mortgage, lien, incumbrance, or license, or 
which does not affect the title of the patent or inven- 
tion to which it relates. Such instrument should 
identify the patent by date and number; or, if the 
invention be unpatented, the name of the inventor. 



Rule 187 CONDITIONAL ASSIGNMENT. 708 

the serial number, and date of the application should 
be stated. 

CONSTRUCTIONS. 

The transfer of an interest in a company which he agrees to 
form to promote invention is not a recordable assignment. 
Farand, 181 0. G. 267. 
It is held that the word "lien" in Eiile 198 does not refer 
to an ex parte statement or affidavit by the beneficiary under 
the lien, 

Clark, 115 0. G. 250. 
An instrument may be an assignment and convey the legal 
title even if a license is reserved. 
Eowand, 114 0. G. 3091. 
The law does not provide for recording evidence relating to 
assignments, but merely for recording the instruments them- 
selves. Letters are merely evidence, and cannot be recorded. 
Charlton, 104 0. G. 1120. 
The instrument must be of such a character that it may 
itself affect the title or the rights of the patentee. The Office 
cannot strike from the record any instrument regularly and 
properly recorded. It does not pass upon evidence as to valid- 
ity, and does not record anything which merely constitutes such 
evidence. 

Flanigan, 103 0. G. 428. 
No residence given, nor filing date. 

Brand, 821 0. G. 893, 1898 C. D. 12, 82 0. G. 893. 

Rule 187. Conditional Assignments. 

Assignments which are made conditional on the 
performance of certain stipulations, as the payment 
of money, if recorded in the office are regarded as 
absolute assignments until canceled with the written 
consent of both parties or by the decree of a compe- 
tent court. The office has no means for determining 
whether such conditions have been fulfilled. 

CONSTRUCTIONS. 

Eatifications of assignment by persons not appearing as par- 
ties thereto are subject to fees for recording, in addition to 
those charged for recording the assignment. 

. Bradford v. Hood, 123 0. G. 1283. 



709 PATENT TO ASSIGNEE. Rule 188 

A case that passes on the subject-matter of this rule. 

Pender, 123 0. G. 2975. 
An assignment of an application includes any application 
divided therefrom. 

Wurtz, 120 0. G. 2441. 
An assignment referring to an application filed by two par- 
ties as joint inventors cannot be applied to an application or 
patent in the name of one of them as a sole inventor, even 
where the same invention is claimed in both cases. 
Harris, 116 0. G. 297. 
The instrument is to be taken as a whole in identifying the 
application. 

E. P. O'Leary, 91 0. G. 2001. 
Assignment and license — difference. 
Rosback, 89 0. G. 705. 

Rule 188. Patent Issue to Assignee. 

In every case where it is desired tliat the patent 
issue to an assignee, the assignment must be recorded 
in the Patent Office at a date not later than the day on 
which the final fee is paid. (See Rule 26.) The date 
of the record is the date of the receipt of the assign- 
ment at the office. 

CONSTRUCTIONS. 

An assignment by a master under order of the Court refused 
recognition. 

McPherson, 117 0. G. 275. 
An assignment must be given force by the Office until modi- 
fied by the written consent of the parties or a decree of a 
competent court. 

-Milton, 97 0. G. 2307. 
Questions under this rule reviewable by Secretauy of the 
Interior. 

Cole Co., 1893 C. D. 138, 65 0. G. 1915. 
The provisions of the rule are never departed from except 
in cases where both the inventor and the assignee request that 
the patent shall issue to the assignee, the assignment being on 
record not later than the day of closing tlie weekly .issue, 
namelv. Thursdav of everv week. 

Cole Co.. 1893 C. D."l38, 65 0. G. 1915. 



Rule 189 acknowledgmejstt of assignmeni. 710 

Rule 189. Acknowledgment of Assignments. 

The receipt of assignments is generally acknowl- 
edged by the office. They are recorded in regular 
order as promptly as possible, and then transmitted 
to the persons entitled to them. (For form of assign- 
ment, see appendix, forms 38-43.) 

CONSTRUCTIONS. 

"It is believed that the Office should follow the uniform rule 
of not returning an assignment filed to any one save the per- 
son filing it or the beneficiary of the instrument. It may de- 
part from the rule upon the advice of a court of competent 
jurisdiction, but has no machinery or jurisdiction to investi- 
gate and determine the rights of the parties except as shown 
by the instrument itself." 
Hogan, 105 0. G. 1780. 

OFFICE FEES. 

Rule 190. Payable in Advance. 

Nearly all the fees payable to the Patent Office are 
positively required by law to be paid in advance — 
that is, upon making application for any action by 
the office for which a fee is payable. For the sake of 
uniformity and convenience, the remaining fees will 
be required to be paid in the same manner. 

Eev, Stat., sec. 4893. 
Rule 191. Schedule of fees.* 

The following is the schedule of fees and of prices 

of publications of the Patent Office: 

On filing each original application for a pat- 
ent, except in design cases $15.00 

On issuing each original patent, except in de- 
sign cases 20.00 

*It is proposed to make the filing fee $20.00 and the 

final fee $15.00. 



711 SCHEDULE OF FEES. RuIg 191 

In design cases : 

For 3 years and 6 months 10.00 

For 7 years 15.00 

For 14 years 30.00 

On every application for the reissue of a patent, 30.00 

On filing each disclaimer 10.00 

On an appeal for the first time from the pri- 
mary examiner to the examiners in chief. . . 10.00 
On every appeal from the examiners in chief to 

the Commissioner 20.00 

For certified copies of patents if in print : 

For specification and drawing, per copy. . . .10 

For the certificate 25 

For the grant 50 

For certifying to a duplicate of a model . . .50 
For manuscript copies of records, for every 100 

words or fraction thereof .10 

If certified, for the certificate additional. . .25 
For 20-coupon orders, each coupon good for one 
copy of a printed specification and drawing, 
and receivable in payment for photographic 

prints 2.00 

For 100 coupons in stub book 10.00 

For uncertified copies of the specifications and 
accompanying drawings of patents, if in 

print, each 10 

For the drawings, if in print 10 

For copies of drawings not in print, the reason- 
able cost of making them. 
For photo prints of drawings, for each sheet of 
drawings : 

Size 10 by 15 inches, per copy .25 

Size 8 by 121^ inches, per copy 15 



Rule 191 SCHEDULE OF FEES. 712 

For recording every assignment, agreement, 
power of attorney, or other paper, of 300 

words or under 1.00 

Of over 300 and under 1,000 words 2.00 

For each additional 1,000 words or frac- 
tion thereof 1.00 

(It is proposed, H. B. 11984, to add ' ' For each additional 
patent or application included in one writing, twenty-five 
cents additional.) 

For abstracts of title to patents or inventions : 
For the search, one hour or less, and cer- 
tificate... 1.00 

Each additional hour or fraction thereof. . .50 
For each brief from the digest of assign- 

•ments, of 200 words or less 20 

Each additional 100 words or fraction 

thereof 10 

For searching titles or records, one hour or less, .50 
Each additional hour or fraction thereof . . .50 
For assistance to attorneys in the examination 
of publications in the Scientific Library, one 

hour or less 1.00 

Each additional hour or fraction thereof. . 1.00 
For copies of matter in any foreign language, 

for every 100 words or a fraction thereof. . . .10 
For translation, for every 100 words or fraction 

thereof 50 

The Official Gazette : 

Annual subscriptions 5.00 

For postage upon foreign subscrip- 
tions, except those from Canada and 
Mexico, $5 or more as required. 
Moneys received from foreign sub- 
scribers in excess of the subscription 
price of $5 will be deposited to the 
credit of the subscriber and applied 
to postage upon the subscription as 



713 SCHEDULE OF FEES. Rule 191 

incurred. All communications re- 
specting the Gazette and all subscrip- 
tions should be addressed to the Su- 
perintendent of Docu/ments, Govern- 
ment Printing Ojjice. 

Single numbers 10 

Decision leaflets 05 

Trade-mark supplements 05 

For bound volumes of the Official Gazette: 

Semiannual volumes, from Jan. 1, 1872, to 
June 30, 1883, full sheep binding, per 

volume 4.00 

In half sheep binding, per volume 3.50 

Quarterly volumes, from July 1, 1883, to 
Dec. 31, 1902, full sheep binding, per 

volume 2.75 

Bimonthly volumes, from Jan. 1, 1903, to 
Mar. 1, 1906, full sheep binding, per vol- 
ume 2.50 

Bimonthly volumes, from Mar. 1, 1906, to 

Jan. 1, 1909, tan duck binding 2.50 

Monthly volumes, from Jan. 1, 1909, tan 

duck binding, per volume 2.50 

Monthly volumes, unbound, with title page, 

digest, and index, per volume 50 

For the annual index, from Jan., 1872, to Jan. 

1, 1906, full law binding, per volume 2.00 

In paper covers, per volume 1.00 

For the annual index from Jan. 1, 1906, buck- 
ram binding 2.00 

In paper covers, per volume 1.00 

For the general index — a list of inventions pat- 
ented from 1790 to 1873 — three volumes, full 
law binding, per set 10.00 



Rule 191 SCHEDULE OF FEES. 714 

For the index from 1790 to 1836 — one volume, 

full law binding 5.00 

For the library edition, monthly volumes to Jan. 
1, 1906, containing the specifications and 
photolithographed copies of the drawings of 
all patents issued during the month, certified, 

bound in full sheep, per volume 5.00 

In half sheet, to Jan. 1, 1906, per volume . . 3.00 
For the library edition, monthly volumes from 
Jan. 1, 1906, to June 30, 1912, tan duck bind- 
ing 5.00 

For the index to patents relating to electricity, 
granted by the United States prior to June 

30, 1882, one volume, 250 pages, bound 5.00 

In paper covers 3.00 

Annual appendixes for each fiscal year subse- 
quent "to June 30, 1882, paper covers 1.50 

For Commissioner's decisions: 

For 1869, 1870, and 1871, one volume, full 

law binding 2.00 

For 1872, 1873, and 1874, one volume, full 

law binding 2.00 

For 1875 and 1876, one volume, with deci- 
sions of United States courts in patent 

cases, full law binding 2.00 

In paper covers 1.00 

Annual volumes with decisions of United States 
courts, for 1877 to 1906, full law binding, per 

volume 2.00 

In paper covers 1.00 

Subsequent annual volumes, buckram binding. . 2.00 
In paper covers 1.00 

A single uncertified copy of a decision or action by any 



715 MODE OF PAYMENT. Rule 194 

tribunal of this Office will be furnished to an interested party 
without charge. 

Tailor, 1892 C. D. 96. 
Only one fee on appeal to the Examiners-in-Chiefs in a 
single case. 

Thomson, 1891 C. D. 138, 56 0. G. 1203. 
A case that passes on the subject-matter of the rule. 

Bradford & Hood, 123 0. CI. 1283. See note to Eule 198.) 

Rule 192. Order for copy of Assignment. 

An order for a copy of an assignment must give 
the liber and page of tlie record, as well as the name 
of the inventor; otherwise an extra charge will be 
made for the time consumed in making any search 
for such assignment. 

Much time may be saved by making the order for copies 
definite. See notice, 233 0. G. 1. 

Rule 193. Copies and Tracings from the Files. 

Persons will not be allowed to make copies or 
tracings from the files or records of the office. Such 
copies will be furnished, when ordered, at the rates 
already specified. 

Rule 194. Mode of Payment. 

All payments of money required for office fees 
must be made in specie. Treasury notes, national- 
bank notes, certificates of deposit, post-office money 
orders, or certified checks. Money orders and checks 
should be made payable to the '^Commissioner of 
Patents." Payment may also be made to the Treas- 
urer, or to any of the depositaries, national banks, or 
receivers of public money, designated by the Secre- 
tary of the Treasury for that purpose, who will issue 
a certificate of deposit in triplicate and will forward 
the original and the duplicate certificates to the Sec- 



Eule 194 MODE OF payment. 716 

retary of the Treasury and the Commissioner of 
Patents, respectively, and will give the triplicate cer- 
tificate to the depositor. Money sent by mail to the 
Patent Office will be at the risk of the sender. Let- 
ters containing money should be registered. In no 
case should money be sent with models. 

Eev. Stat., sec. 4935. 

CONSTRUCTIONS. 

See notes to Rules 164 and 167. 

Applicants and attorneys should take notice of the fact that 
the last regular mail delivery at the Patent Office is at about 
noon each day, and it would seem to be an act of prudence, 
where the matter is of vital importance, as in the present 
case, and it is doubtful whether the papers will reach the Pat- 
ent Office in time by the regular mail, to employ some other 
agency, or at least to affix a special delivery stamp to the en- 
velope. 

136 0. G. 657. 
The duplicate and not triplicate receipt sent to the Office. 
Date of payment and not date of receipt prevails. 
Conneil, 107 0. G. 3235. 
It was his duty to pay the fee in time to obtain the cer- 
tificate and mail it within the six months. 
Baldwin, 106 0. G. 1780. 
Coupons are only received when properly filled out. 

92 0. G. 441. 
A djaft dishonored because of failure of bank does not con- 
stitute a payment of a patent fee. (Disc, of Sec.) 
Wash, 1897 C. D. 204, 81 0. G. 799. 
Historv of the rule. 

Griffith, 1897 C. D. 46, 80 0. G. 1126. 
This rule does not interfere with the right given an appli- 
cant by the statute of paying patent fees to the officers desig- 
nated in section 4935 R. S. any time within the period fixed 
by law, but prevents the abuse of this privilege by requiring 
that the certificate of deposit shall be promptly forwarded to 
the Patent Office. 

Griffith, 1897 C. D. 46, 80 0. G. 1126. 
The part of this rule relating to certificates of deposit, 
adopted June 18, 1897, should not be held to apply to certifi- 
cates of deposit issued prior to the approval of the rule, pro- 



717 MONEY PAID BY MISTAKE. Rule 195 

vided they are forwarded to the patent Office within a reason- 
able time after the publishing of said rule. 
Griffith, 1897 C. D. 46, 80 0. G. 1126. 

REPAYMENT OF MONEY. i 

Rule 195. Money Paid by Mistake Refunded. 

Money paid by actual mistake, such as a payment 
in excess, or when not required by law, or by neglect 
or misinformation on the part of the office, will be 
refunded; but a mere change of purpose after the 
payment of money, as when a party desires to with- 
draw his application for a patent or for the registra- 
tion of a trade-mark, or to withdraw an appeal, will 
not entitle a party to demand such a return. 

Rev. Stat., sec. 4936. 

CONSTRUCTIONS. 

Hereafter all patent fees shall be paid to the Commis- 
sioner of Patents, who shall deposit the same in the 
Treasury of the United States in such manner as the 
Secretary of the Treasury shall direct, and said Commis- 
sioner is authorized to pay back any sum or sums of 
money paid to him by any person by mistake or in excess 
of the fee required by law. Excerpt from the Deficiency 
Appropriation Act, approved March 6, 1920. 

Fee not returned or transferred when applicant finds that 
another than himself was the real inventor. 
Giles, 190 0. G. 547. 

A new reference cited in Commissioners decision, the appeal 
fees not returned, as new citation was made to cure a defect 
not previously pointed out bv applicant. 
Hofmann, 125 0. G. 991. 

The Examiner's ruling was a Judicial decision subject to re- 
view upon appeal, and since the applicant accepted his decision 
without appeal it is not entitled to the return of the fee in 
the present case. 

The Chapot Shirlaw Co., 121 0. G. 2327. 

A filing fee will not be transferred from a proper sole ap- 
plication to a joint application. A fee paid as a joint appli- 
cation whicli the Office has refused to file may be applied to a 
sole application. 

Harris, 118 0. G. 1682. 



Rule 195 MONEY PAID BY MISTAKE. 718 

The appeal was in order, and, having decided to take the 
same, the petitioner made no mistake in paying the neces- 
sary fee. The motion to reopen, with the consequent proceed- 
ings which the petitioner brought and carried on, instead of 
following up tlie appeal, represents a mere change of purpose 
on his part. The fee not returned. 
Townsend, 118 0. G. 1386. 

A joint application became abandoned for want of filing 
fee. One of the joint inventors filed an application with fee — 
a request to transfer the fee to a subsequent joint application 
refused. 

Harris, 117 0. G. 1164. 

Division requested found to be an error. The fee not re- 
turned. 

Thompson, 107 0. G. 270. 

The record of each application must be complete within it- 
self, and the parts of an application once filed cannot be used 
as parts of a later application.. 
103 0. G. 428. 

Money will not be returned merely because the applicant 
wishes to change the original application into one for a re- 
issue. 

Priest, 103 0. G. 428. 

Mistake in payment, not a mistake in judgments, as where 
one makes an application as a sole inventor when he should 
have applied as a joint inventor. Application to a different 
application is equivalent to a repayment. 
101 0. G. 2079. 

Applicant filed an application which was rejected. He then 
sought to introduce new claims which were rejected for new 
matter, the Examiner sajang that the matter was patentable. 
In a separate application, applicant filed an application for 
such new matter, which was rejected by the new Examiner. 
Fee not returned. (Motion for rehearing denied.) 101 0. G. 
2827 

Fowler, 101 0. G. 1833-4. 

Drawings in one case and specification which was a copy 
of a specification in another case filed. Eefused to apply the 
filing fee in a new case. 

Lawson, 101 0. G. 1833. 

When a caveat was filed under the mistaken idea that it 
was only necessary to state the object of the invention, the 
fee will not be returned. 

Landenberger, 99 0. G. 1866. 

An appeal was taken to Examiner-in-Chief, who decided 



719 OFFICIAL GAZETTE. RuIg 196 

that the appeal was improper under Eule 124. The return 
of the appeal fee refused. 

Brill & Adams, 98 0. G. 3587. 
Question as to whether an application with fee should be 
construed as for a design or mechanical patent. 
Hartje, 95 0. G. 2485. 
When an appeal is regularly taken, and the fee therefor paid, 
but thereafter the applicant changes his purpose, and concludes 
not to prosecute the appeal. Held that there was no such mis- 
take in the payment as would warrant the return of the ap- 
peal fee. 

Horton, 1897 C. D. 207, 81 0. G. 800. 
An appeal fee will not be returned because applicant con- 
cludes not to prosecute. 

Horton, 1896 C. D. 99, 77 0. G. 2137. 
Eequest after examination for the return of fee paid upon 
an application for a design upon the same day that a patent 
issued to the same inventor for the same design refused. 
Flomerfelt, 1895 C. D. 101, 73 0. G. 1411. 
Where an applicant paid a second renewal fee on the very 
day that a decision was published to the effect that there was 
no authority in the statute for more than one renewal fee of 
an application. Held that the fee was paid by mistake, an^4 
should be returned. 

Smith, 1895 C. D. 99, 71 0. G. 297. i^ 

Where the original application had been stricken from tife 
files because it appeared that the inventor has signed and 
sworn to it in blank — Held, that the fee formerly paid upon 
said application could hot be applied to a new application filed 
in place thereof. 

Ayres, 1890 C. D. 103, 51 0. G. 1944. . „ 

When an application is made, by mistake, for a meciraff- 
ical patent, the fee will not be applied as part payment dBf a 
design patent. 

Sellers, 1870 C. D. 58. )^ ?.«i 

A case that passes on the subject-matter of this rule. g^Iood 
Zehrbach, 108 0. G. 290. ^^g_ 

Rule 196. Official Gazette. eiaigsi 

lo JIbo 
The Official Gazette, a weekly publicatio^j^j^h^g^ 

has been issued since 1872, takes the place of t^j^jg^^ 

Patent Office Report. It contains claims of^^jaljijj^at- 

ents issued, including reissues and designs, witE^rn^ 



Rule 197 REMOVAL OF BOOKS. 720 

tions of the drawings selected to illustrate the inven- 
tions claimed, illustrations of trade-marks published, 
and lists of trade-marks, prints, and labels registered. 
It also contains decisions rendered by the courts in 
patent cases and by the Commissioner of Patents, and 
other special matters of interest to inventors. 

The Gazette is furnished to subscribers at the rate 
of $5 per annum. When sent abroad, an additional 
charge is made for the payment of postage. Single 
copies are furnished for ten cents. All orders and 
remittances for the Gazette should be sent to the 
Superintendent of Documents, Government Printing 
Office, Washington, D. C. The Gazette is issued in 
monthly volumes, with a title page and index to each 
volume. An index is published annually, which is 
sent to all subscribers without additional cost. 

On June 30, 1912, the publication of the monthly 
library edition, issued since 1872, containing the full 
specifications and drawings of all patents granted 
during the previous month, was suspended. 

Eev. Stat., see. 489. 

LIBRABY BECrULATIONS. 
Rule 197. Removal of Books. 

Officers of the bureau and members of the examin- 
ing corps only are allowed to enter the alcoves or take 
books from the scientific library. 

Books taken from this library must be entered in a 
register kept for the purpose, and returned on the 
call of the librarian. They must not be taken from" 
the building except by permission of the Commis- 
sioner. 

Any book lost or defaced must be replaced by a new 
copy. 



721 AUTHOEiTY OF COMMISSIONER. Rule 199 

Patentees and others doing" business with the office 
can examine the books only in the library hall. 

Translations will be made only for official use. 

Copies or tracings from works in the library will 
be furnished by the office at the usual rates. 

Rev. Stat., sec. 486. 

AMENDMENTS OF TEE RULES. 

Rule 198. Publication of Amendment. 

All amendments of the foregoing rules will be pub- 
lished in the Official Gazette. 

QUESTIONS NOT SPECIFICALLY PROVIDED FOR. 

Rule 199. Supervisory Authority of the Commis- 
sioner. 

All cases not specifically defined and provided for 
in these rules will be decided in accordance with the 
merits of each case under the authority of the Com- 
missioner, and such decision will be communicated to 
the interested parties in writing. 

CONSTRUCTIONS. 
In an interference case, when time seemed to be needlessly 
consumed by an applicant in contest with a patentee. 

Gregory, Jackson & Connet v. Ledoux, 219 0. G. 929. 
Upholding authority of the Commissioner, even after a 
favorable decision by the Board. 

Case Moore v. U. S. ex rel. Chott, 192 0. G. 520. 
The supervisory power of the Commissioner will not be ex- 
ercised to require a dissolution of an interference unless a 
proper affidavit under Rule 75 was filed. 
Hodgkinson v. Roller, 185 0. G. 251. 
The Supervisory authority of the Commissioner will not be 
exercised where there is still an appeal to him. 

Brown v. Inwood & Lavenbcrg, 135 0. G. 895; Frost v. 
Chase, 151 0. G. 741. 
Interference dissolved, apparently under supervisory power. 

Reechert v. Brown, 124 0. G. 2903. 
See note to Rule 124. 



Rule 200 APPLICATION OF FOEMER RULES. ' 722 

The supervisory authority of the Commissioner will be ex- 
ercised only in a clear case. 

Munro v. Walker, 122 0. G. 2062. 
There is no such error in the Examiner's decision as would 
warrant the review of the Primary Examiner's decision af- 
firming the patentability of a claim. 

Einsche v. Sandherr, 105 0. G. 1780. 
An interference may be dissolved, under the supervisory au- 
thority of the Commissioner, but the power should be ex:er- 
cised with caution, and only in a clear case. 
Wilcomb V. Lasher, 105 0. G. 743. 
It is only in rare cases that the supervisory authority of the 
Commissioner will be exercised, and then only to the extent 
of returning it to the Examiner to be reconsidered. (See 
Hicks & Costello, 103 0. G. 1163.) 
Eead v. Scott, 101 0. G. 449. 
The discretionary power of the Commissioner should be ex- 
ercised only in exceptional cases, and then only to correct 
some palpable error in the decision of the Examiner which is 
clear and evident on its face. 

Goss V. Scott, 96 0. G. 2307; Denton & Denton v. Eiker, 
98 0. G. 415. See Ware, 97 0. G. 2744. 
That authority should be exercised only where the rules pre- 
sent no remedy. 

Curtis V. Matsh, 92 0. G. 1236. 
The Commissioner has power to withhold a patent even after 
a favorable decision by a tribunal of the Office, but this power 
will only be exercised in extreme cases. 
Strong, 1891 C. D. 175, 57 0. G. 274. 
Cases that pass on the subject-matter of this rule. 

Sipschutz V. Eloyd, 130 0. G. 2718; Wickers and Furlong 
V. Weiwurm, 129 0. G. 250-1; Serrell v. Donnelly, 129 
0. G. 250-1; Barber v. Wood, 127 0. G. 1991; Dag- 
gett V. Kaufmann, 127 0. G. 3641. 

Rule 200. Application of Former Rules. 

Questions arising in applications filed prior to Jan- 
uary 1, 1898, where these rules do not apply, shall be 
governed by the rules of June 18, 1897. 

Thomas Ewing, 
Commissioner of Patents. 



APPENDICES. 



725 



CHARTS FOR DRAFTSMEN. 



APPENDIX A. 

CHARTS FOR DRAFTSMEN. 






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ELECTF^ICAL SYMBOLS. 



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APPENDIX OF CHAETS. 



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(See next page.) 

This chart should be followed. 
Daum, 267 0. G. 183. 



727 CONSTRUCTIONS. 

CONSTRUCTIONS. 

The insulating material should be indicated as provided in 
the charts. 

Whitney, 110 0. G. 603. 

See Journal of American Society of Mechanical Engineers, 
Dec, 1913, page 48. 

As to colors, see M. Zimmerman Company, 137 0. G. 1991. 

''While a full and complete disclosure is essential, 
on the other hand, the invention should be disclosed in 
its simplest aspect. For instance, where the invention 
resides in a motor provided with a main field, an 
armature and a compensating winding, bearing cer- 
tain space relations to each other, the invention is 
best illustrated by the simplest form of diagrammatic 
view (see Chart for Draftsmen, Rules of Practice) 
showing these parts conventionally in their proper 
space relations (Illus.-Pats., 946, 502; 1, 138, 673; 
931, 336). To present working drawings or a photo- 
graphic view of such a motor showing details of base 
supports, casings, journals and bearings, or even the 
specific form of pole pieces and windings, where such 
specific forms are not of the essence of the invention, 
not onl};^ places needless labor upon the office, but ob- 
scures the real invention. This is even more true of 
complicated systems of wiring involving many cir- 
cuits Only circuits typical of the invention should 
be illustrated, and they in the simplest form possible, 
duplication being ordinarily avoided. An intricate 
working drawing of such a system is the bane of all 
who have to deal with it, and the amount of unneces- 
sary time and labor in the aggregate, spent by the 
office, attorneys and the courts in deciphering it, both 
before and after patent, can not be estimated. If we 
multiply one such patent by the total number of this 
character among nearly one and a quarter million 
patents granted by our office we can appreciate what 
an unnecessary load our system labors under. 



APPENDIX OF CHARTS. 728 

"The main circuit and all apparatus connected in 
series therewith should be shown in heavy lines and, 
so far as practicable, in the same horizontal or ver- 
tical direction, while the shunt and control circuits 
should be shown in lighter lines, preferably at right 
angles thereto. Lines should cross as little as pos- 
sible. The arrangement of apparatus should be such 
as to keep the groups distinct and clearly show their 
relations at a glance (Illus.-Pats., 1, 113, 199; 900, 
707; 1, 170, 211). Much ingenuity can be displayed 
in skillfully arranging the parts of electrical systems 
and all work in connection therewith is ever afterward 
facilitated thereby. So vital is this to a clear under- 
standing of the invention that in some cases in di- 
vision 26, it is necessary for the examiner to make 
his own layout of the system in working up the case. 

"In the case of methods, each step of which involves 
a different particular arrangement of parts of an 
electrical system, in addition to the showing of the 
system the arrangement of parts for each step shoidd 
be dia grammatically illustrated in the most conven- 
tional m,anner, the diagrams being arranged in the 
order of the steps. This is more important to a clear 
disclosure, even, than a complete layout of the system, 
including the controller features and connections, 
since given the sequence of steps desired the designer 
or draftsman may well supply the latter (Illus.-Pats., 
527, 947; 516, 834; 1, 199, 453; 587, 340). 

"Where the drawing alone can not be made to tell 
the whole story of an invention, often a legend ap- 
plied to a part will facilitate search. For instance, 
where it is essential that the field magnet of a dynamo 
electric machine be normally saturated, the addition 
of the words "normally saturated" discloses at a 
glance the essential characteristic of the device." 
— Eichard E. Marine, Paper before Examining Corps. 



729 BY JOINT INVENTOES. No. 2 

APPENDIX B. 

FOEMS. 
PETITIONS. 

The forms given in the Eules of Practice are merely sugges- 
tive and not mandatorjr. 

Cook, 1892 C. D. 232, 61 0. G. 1480. 

No. 1. By a Sole Inventor. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, prays that letters patent may be 

granted to him for the improvement in 

set forth in the annexed specification. 

Signed at , in the county 

of and State of 

, this day 

of , 19 



No. 2. By Joint Inventors. 

To the Commissioner of Patents: 

Your petitioners, , and 

, citizens of the United 

States and residents, respectively, of 

, in the county of 

and State of and of 

, in the county of 

and State of 



No. 3 APPENDIX OF FORMS. 730 

(or, subjects, etc.), whose post-office addresses are, 

respectively, and 

, pray that letters patent may be 

granted to them, as joint inventors, for the improve- 
ment in , set forth in the 

annexed specification. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



Two petitions may be used. 

S. T. and C. H. WeUman, 88 0. G. 2065. 

No. 3. By an Inventor, for Himself and Assignee. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

.' and State of (or, 

subject, etc.), whose post-office address is 

, prays that letters patent may be 

granted to himself and , a 

citizen of the United States and a resident of 

, in the county of 

and State of , 

whose post-office address is , 

as his assignee, for the improvement in 

, set forth in the annexed specification. 

Signed at , in the county 

of and State of 

, this day 

of , ,19 



731 PETITION BY AN ADMIISriSTEATOR. No. 5 

No. 4. Petition with Power of Attorney. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident .of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, prays that letters patent may be 

granted to him for the improvement in 

: , set forth in the annexed specification ; 

and he hereby appoints , of 

, State of , 

his attorney, with full power of substitution and revo- 
cation, to prosecute this application, to make altera- 
tions and amendments therein, to receive the patent, 
and to transact all business in the Patent Office con- 
nected therewith. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



Last sentence sufficient authorization for signing and prose- 
cuting renewal application. 
Agee, 101 0. G. 1609. 

No. 5. By an Administrator. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, administrator of the estate of 



No. 6 APPENDIX OF FORMS. 732 

, late a citizen of 

, deceased (as by reference to the duly cer- 
tified copy of letters of administration, hereto an- 
nexed, will more fully appear), prays that letters 
patent may be granted to him for , the invention of 

the said (improvement in 

) , set forth in the annexed 

specification. 

Signed at , in the county 

of and State of 

, this day 

of 19 



Administrator, etc. 

No. 6. By an Executor. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, executor of the last will and testament 

of , late a citizen of 

, deceased (as by reference to the 

duly certified copy of letters testamentary, hereto 
annexed, will more fully appear), prays that letters 
patent may be granted to him for the invention of 

the said (improvement in 

) , set forth in the annexed 

specification. 

Signed at , in the county 

of and State of 



733 PETITION FOB REISSUE. No. 8 

, this day 

of ,19 



Executor, etc. 

No. 7. By a Guardian of an Insane Person. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, and who has been appointed guardian 

{or conservator or representative) of 

(as by reference to the duly certified copy 

of the order of court, hereto annexed, will more fully 
appear), prays that letters patent may be granted to 

him for the invention of the said 

(improvement in ), 

set forth in the annexed specification. 

Signed at , in the county 

of ; and State of 

, this day 

of ,19 



Guardian, etc. 

No. 8. For a Reissue (by the Inventor). 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 



No. 9 APPENDIX OF FORMS. 734 

, prays that he may be allowed to sur- 
render the letters patent for an improvement in 

, granted to him 

, 19 , whereof he is now sole 

owner {or, whereof , on whose 

behalf and with whose assent this application is made, 
is now sole owner, by assignment), and that letters 

patent may be reissued to him {or, the said 

) for the same invention upon the 

annexed amended specification. With this petition is 
filed an abstract of title, duly certified, as required 
in such cases. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



[Assent of Assignee to Reissue.] 
The undersigned, assignee of the entire (or of an 
undivided) interest in the above-mentioned letters 
patent, hereby assents to the accompanying applica- 
tion. 



No. 9. For a Reissue (by the Assignee). 

[To be used only when the inventor is dead.] 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject, etc.), whose post-office address is 

, prays that he may be allowed to sur- 
render the letters patent for an improvement in 



735 CAVEATS. No. 11 

, No , granted 

, 19 , "to 

, now deceased, whereof lie is now 

owner, by assignment of the entire interest, and that 
the letters patent may be reissued to him for the 
same invention, upon the annexed amended specifi- 
cation. With this petition is filed an abstract of title 
{or, an order for making and filing the same, etc.). 

Signed at , in the county 

of and State of 

, this day 

of ,19 



No. 10. For Letters Patent for a Design. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State of {or, 

subject etc.), whose post-office address is 

, prays that letters patent may be 

granted to him for the term of three and one-half 
years {or, seven years or fourteen years) for the new 

and original design for , set 

forth in the annexed specification. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



No. 11. For a Caveat. 

(This form is obsolete; law relating to caveats re- 
pealed by act of July 1, 1910.) 



No. 12 APPENDIX OF FORMS. 736 

No. 12. For the Renewal of a Forfeited Application. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States and a resident of 

, in the county of 

and State. of {or, 

subject, etc.), whose post-office address is 

, represents that on 

,19 , he filed an application for letters 

patent for an improvement in .• , 

serial number , , which appli- 
cation was allowed ,19 , 

but that he failed to make payment of the final fee 
within the time allowed by law. He now makes re- 
newed application for letters patent for said inven- 
tion, and prays that the original specification, oath, 
drawings, and model may be used as a part of this 
application. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



The attorney in the original case may not sign. 

Thomas, 92 0. G. 1035. See also Barre, 97 0. G. 1176 
and 94 0. G. 1791 ; La Brow v. Fix, 177 0. G. 771. 

SPECIFICATIONS. 

No. 13. For an Art or Process. 

To all whom it may concern: 

Be it known that I, , a 

citizen of the United States, residing at 

, in the county of 

and State of (or, subject, 



737 AET OR PROCESS. No. 13 

etc.), have invented new and useful improvements in 
processes of extracting gold from its ores, of which 
the following is a specification : 

This invention relates to the process of extracting 
gold from its ores by means of a solution of cyanide , 
of an alkali or alkaline earth, and has for its object 
to render the process more expeditious and consid- 
erably cheaper. 

In extracting gold from its ores by means of a solu- 
tion of cyanide of potassium, sodium, barium, etc., 
the simultaneous oxidation of the gold is necessary, 
and this has hitherto been effected by the action of 
the air upon the gold which is rendered oxidizable 
thereby by the action of the cyanide solution. 

Instead of depending solely upon the agency of the 
air for the oxidizing action I employ, to assist the 
oxidation of the gold, ferricyanide of potassium or 
another ferricyanogen salt of an alkali or of an earth 
alkali in an alkaline solution. By this means the oxi- 
dation, being rendered very much more energetic, is 
effected with a considerably smaller quantity of the 
solvent. Thus, by the addition of ferricyanide of 
potassium or other ferricyanides to the cyanide of 
potassium solution, as much as eighty percent of 
potassium cyanide may be saved. 

It may be remarked that the ferricyanide of potas- 
sium alone will not dissolve the gold and does not 
therefore come under the category of a solvent hith- 
erto employed in processes of extraction. It does not 
therefore render unnecessary the employment of the 
simple cyanide as a solvent, but only reduces the 
amount required owing to the capacity of the ferri- 
cyanide to assist the air to rapidly oxidize the gold in 
the presence of the simple salt. Consequently the 



No. 14 APPENDIX OF FORMS. 738 

cyanogen of the latter is not used to form the gold 
cyanide compound. 

I claim: 

The process of extracting gold from its ores con- 
sisting in subjecting the ores to the dissolving action 
of cyanide of potassium in the presence of ferri- 
cyanide of potassium, substantially as herein de- 
scribed. 



No. 14. For a Machine. 

To all whom it may concern: 
Be it known that I, , a 

citizen of the United States, residing at 

, in the county of 

and State of {or, 

subject, etc.), have invented a new and useful meat- 
chopping machine, of which the following is a speci- 
fication : 

My invention relates to improvements in meat- 
chopping machines in which vertically reciprocating 
knives operate in conjunction with a rotating chopping 
block; and the objects of my improvements are, first, 
to provide a continuously lubricated bearing for the 
block; second, to afford facilities for the proper ad- 
justment of the knives independently of each other in 
respect to the face of the block; and, third, to reduce 
the friction of the reciprocating rod which carries 
the knives. 

I attain these objects by the mechanism illustrated 
in the accompanying drawing, in which — 

Figure 1 is a vertical section of the entire machine; 
Fig, 2, a plan view of the machine as it appears after 
the removal of the chopping block and knives ; Fig. 3, 
a vertical section of a part of the machine on the line 



739 MACHINE. No. 14 

3 3, Fig. 2 ; and Fig. 4, a detailed view in perspective 
of the reciprocating crosshead and its knives. 

Similar numerals refer to similar parts throughout 
the several views. 

The table or plate 1, its legs or standards 2 2, and 
the hanger 3, secured to the underside of the table, 
constitute the framework of the machine. In the 
hanger 3 turns the shaft 4, carrying a fly-wheel 5, to 
the hub of which it attached a crank 6, and a crank- 
pin 7, connected by a link 8, to a pin passing through 
a crosshead 9, and to the latter is secured a rod 10, 
having at its upper end a crosshead 11, carrying the 
adjustable chopping knives, 12 12, referred to here- 
inafter. 

The crosshead 9, reciprocated by the shaft 4, is 
provided with anti-friction rollers 13 13, adapted to 
guides 14 14, secured to the underside of the table 1, 
so that the reciprocation of this crosshead may be 
accompanied with as little friction as possible. 

To the underside of a wooden chopping block 15 is 
secured an annular rib 16, adapted to and bearing in 
an annular groove 17 in the table 1. {See Figs. 1 and 
2.) This annular groove or channel is not of the 
same depth throughout, but communicates at one or 
more points (two in the present instance) with pockets 
or receptacles 18, 18 wider than the groove and con- 
taining supplies of oil, in contact with which the rib 
16 rotates, so that the continuous lubrication of the 
groove and rib is assured. The rod 10 passes through 
and is guided by a central stand 19, secured to the 
table 1, and projecting through a central opening in 
the chopping block without being in contact therewith, 
the upper portion of the said &tand being contained 
within a cover 20, which is secured to the block, and 
which prevents particles of meat from escaping 
through the central opening of the same. 



No. 14 



APPENDIX OF FOKMS. 



740 



THESIZEOFTHE SHEETT MUST BE EXACTIY 
10 X 15 INCHES. SEE RULE 52. fb). 




JLShmey; 



-THIS SPACE MUST BE EIGHT INCHES' 



741 MACHINE. No. 14 

The crosshead 11, previously referred to, and shown 
in perspective in Fig. 4, is vertically adjustable on 
the rod 10, and can be retained after adjustment by 
a set-screw 21, the upper end of the rod being 
threaded for the reception of nuts 22, which resist 
the shocks imparted to the crosshead when the knives 
are brought into violent contact with the meat or 
the chopping-block. 

The knives 12, 12 are adjustable independently of 
each other and of the said crosshead, so that the 
coincidence of the cutting-edge of each knife with the 
face of the chopping-block may always be assured. 

I prefer to carry out this feature of my invention 
in the manner shown in Fig. 4, where it will be seen 
that two screw-rods 23, 23 rise vertically from the 
back of each knife and pass through lugs 24, 24 on 
the cross-head, each rod being furnished with two 
nuts, one above and the other below the lug through 
which it passes. The most accurate adjustment of 
the knives can be effected by the manipulation of 
these nuts. 

A circular casing 25 is secured to the chopping- 
block, so as to form on the same a trough 26 for keep- 
ing the meat within proper bounds; and on the edge 
of the annular rib 16, secured to the bottom of the 
block, are teeth 27, for receiving those of a pinion 28, 
which may be driven by the shaft 4 through the 
medium of any suitable system of gearing, that shown 
in the drawing forming no part of my present inven- 
tion. 

This shaft 3 may be driven by a belt passing round 
the pulleys 29, or it may be driven by hand from a 
shaft 30, furnished at one end with a handle 31, and 
at the other with a cog-wheel 32, gearing into a 
pinion on the said shaft 4. 



No. 14 APPENDIX OP PORMS. 742 

A platform 33 may be hinged, as at 34, to one edge 
of the table 1, to support a vessel in which the 
chopped meat can be deposited. The means by which 
it may be supported are shown in full lines, and the 
most convenient method of disposing of it when not 
in use is shown in dotted lines, in Fig. 1. 

I am aware that prior to my invention meat-chop- 
ping machines have been made with vertically-recip- 
rocating knives operating in conjunction with rotating 
chopping-blocks. I therefore do not claim such a 
combination broadly; but 

I claim: 

1. The combination, in a meat-chopping machine, 
of a rotary chopping-block having an annular rib, 
with a table having an annular recess to receive said 
rib, and a pocket communicating with the said recess, 
all substantially as set forth. 

2. In a meat-chopping machine, the combination 
of a rotary chopping-block with a reciprocating cross- 
head carrying knives, each of which is vertically ad- 
justable on the said cross-head independently of the 
other, substantially as described. 

3. A chopping knife having two screw rods pro- 
jecting perpendicularly from its back and parallel 
with the sides of the knife. 

4. A meat-chopping machine provided with a rod 
carrying chopping knives and adapted to be recipro- 
cated, a cross-head secured to said rod, anti-friction 
rollers mounted on the cross-head, and guides with 
which the rollers cooperate, substantially as described. 



This seems to have had its origin in U. S. letters patent No. 
157,213, granted to August Nittinger, Jr., Nov. 24, 1874. The 
drawing has also been adopted by the Canadian Patent Office. 
The attorneys of record were unable to give the name of the 
draftsman. 



743 MACHINE. No. 14 

Name of the Draftsman Sought. 

We can not tell you at this date the name of the 
draftsman who made the original drawing, which is 
now used by the United States and the Canadian 
Patent OfiBces. We had several draftsmen at that 
time who were capable of making the drawings. 

Eegretting that we can not give you this informa- 
tion., we are, 

Yours very truly, 

Howson & Howson, 
Solicitors of Patents, Philadelphia. 

Specification forming part of Letters Patent No. 

157,213, dated November 24, 1874; application 

filed January 21, 1874. 

To all whom it may concern : 

Be is known that I, August Nittinger, Jr., of Phil- 
adelphia, Pa., have invented an Improved Meat- 
Chopping Machine, of which the following is a speci- 
fication : 

My invention relates to meat-chopping machines in 
which vertically-reciprocating knives operate in con- 
junction with a rotating chopping-block ; and the ob- 
jects of my invention are, first, to diminish friction 
in driving the reciprocating rod which carries the 
knives; and, second, to provide a continuously-lubri- 
cated bearing for the rotating chopping-block, which 
objects I attain by the mechanism illustrated in the 
section. Figure 1, plan view, Fig. 2, and perspective 
view, Fig. 3, of the accompanying drawing. 

The frame-work of the machine consists of a table, 
A, supported on suitable legs or standards, B, and in 
suitable bearings in the frame turns the driving-shaft 
D, carrying a fly-wheel, E, a crank-pin on the hub of 



No. 14 APPENDIX OF FOEMS. 744 

which is connected by a link, a, to the cross-head G, 
to which is secured a rod, H, having at its upper end 
a cross-head, I, carrying the adjustable chopping- 
knives C, referred to hereafter. 

The cross-head G has anti-friction rollers, e' , 
adapted to guides M, secured to the under side of the 
table A, so that the reciprocation of the cross-head 
G, consequent upon the rotation of the driving- shaft, 
may be accompanied with as little friction as possible. 

J is the chopping-block, to the under side of which 
is secured the annular rib d, adapted to an annular 
groove, e, in the table A. (See Fig. 2.) 

This groove or annular channel is not of the same 
depth throughout, but communicates at one or more 
points (two, in the present instance) with deeper 
pockets, /, containing supplies of oil, so that as the 
annular rib rotates in the groove it will continuously 
convey from the pockets sufficient oil to insure proper 
lubrication. 

The rod H passes through and is giiided by a cen- 
tral stand, K, secured to the table A, the upper por- 
tion of this stand, which projects above the chopping- 
block, being contained within a cover, L, secured to 
the said block, so as to prevent the escape of particles 
of meat through the center of the block and the access 
of such meat to the standard K. 

The cross-head I, best observed in the perspective 
view. Fig, 3, is vertically adjustable on the rod H, 
and can be secured after the adjustment by a set- 
screw, X, and from each side of the cross-head project 
two lugs, li h, each pair of lugs carrying a knife, h, 
and each knife having two screws-rods, i, passing 
through the said lugs, and furnished above and below 
with nuts, so that the knives can be readily adjusted 



745 MACHINE. No. 14 

in the cross-head, while the latter with its knives can 
be easily adjusted on the rod H. 

This plan of adjusting the knives, both in respect 
to each other and to the surface of the chopping- 
block, is an important feature of my invention, as one 
by which the best cutting effect of the knives can al- 
ways be attained. 

A trough, P, for keeping the meat within proper 
limits on the chopping-block, is secured to the latter, 
and on the edge of the annular rib d, on the under 
side of the chopping-block, are teeth for receiving 
those of a pinion, m, which may be driven from the 
shaft D through the medium of any suitable system 
of gearing, that shown in the drawing forming no part 
of my present invention. 

Aplatform, Q, is hinged, at h, to one edge of the 
table A, and to the under side of this platform, near 
the outer edge of the same, is hinged the upper end 
of a diagonal rod, R, the lower end of which rests 
upon a ledge, w, on one of the stands B of the frame. 
This platform serves to support a vessel, into which 
the chopped meat can be deposited; but when the 
platform is not required for this purpose, and when 
the machine has to be moved about from place to 
place, the rod R may be detached from its ledge, the 
platform lowered, and both platform and rod ar- 
ranged in the position shown by dotted lines in Fig. 1. 

I claim as my invention — 

1. The combination, in a meat-chopper, of the rod 
H, carrying the knives, the block G, secured to the 
lower end of the rod, and provided with rollers e' e' , 
the guides M M, and crank-shaft connected by the 
arm a to the block G, all as set forth. 



No. 15 APPENDIX OF POEMS. 746 

2. The combination of the rotating block J, its 
annular rib d, the groove e, for receiving said rib, and 
pockets / /, communicating with said groove, all as 
specified. 

In testimony whereof, I have signed my name to 
this specification in- the presence of two subscribing 
witnesses. 

AUGUST NITTINGER, Je. 
Witnesses : . 

Wm. a. Steel, 
Haeey Smith. 

No. 15. For a Composition of Matter. 

To all whom it may concern: ' 
Be it known that I, , a 

(Full name of applicant.) 

citizen of , residing at .... 

, in the county of 

and State of 

{or, subject of, etc.), have invented a new and useful 
Non- Conducting Plastic Composition, of which the fol- 
lowing is a specification: 

The object of my invention is the production of a 
plastic nonconducting composition or cement to be 
applied to the surfaces of steam-boilers and steam- 
pipes and other receptacles and conduits as a lagging 
for preventing radiation of heat and the permeation 
of water, and rendering them fireproof. 

My composition consists of a mixture of paper-pulp 
or other vegetable fibrous material, a powdered min- 
eral filler, such as soapstone or Portland cement, a 
mineral fibrous material, such as asbestos, and a 
mineral cementing material, such as silicate of sodium 
or potassium (soluble glass). 



747 COMPOSITION OP MATTEE. No. 15 

In preparing the composition I prefer to use the 
ingredients in abont the following proportions, viz., 
fifty pounds of paper-pulp, fifty pounds of soapstone, 
twenty-five pounds of asbestos, and three quarts of a 
33° Baume solution of soluble glass. Good results 
may be obtained, however, when the ingredients are 
varied within the following limits : vegetable fibrous 
material, forty to sixty pounds; powdered mineral 
filler, forty-five to fifty-five pounds; mineral fibrous 
material, twenty to thirty pounds; soluble glass, two 
to four quarts of a 30° Baume to 35° Baume solution. 

The asbestos may in some cases be omitted when a 
cheaper product is desired, though the composition is 
not then so efficient for the lagging of surfaces sub- 
jected to high temperatures. 

These ingredients are mixed with a quantity of 
water sufficient to form a paste or mortar of such 
consistency as to enable it to be plastered over the 
surface to be protected. It may be applied in one or 
more coats or layers, in the ordinary manner, accord- 
ing to the nature of the article and the amount of 
protection required. 

My composition is light, is fireproof, is a very effi- 
cient nonconductor of heat, is impervious to water, 
adheres without cracking when it dries to the surface 
to which it is applied, and, as a whole, possesses in 
a high degree all the desired properties of a lagging 
for steam-heated surfaces. 

I claim: 

1. A plastic composition adapted to form a light- 
weight, fireproof and waterproof lagging for steam- 
heated surfaces, comprising a vegetable fibrous ma- 
terial, a mineral filler in powdered form and a min- 
eral cementing substance. 



No. 16 APPENDIX OF POEMS. 748 

2. A plastic composition adapted to form a lagging 
for steam pipes and the like comprising forty to sixty 
pounds of paper-pulp, forty-five to fifty-five pounds 
of powdered soapstone, and two to four quarts of a 
30° Baume to 35° Baume solution of soluble glass. 

3. A plastic composition consisting of a vegetable 
fibrous material, a powdered mineral filler, a mineral 
fibrous material and a mineral cementing substance 
substantially as described. 

4. A plastic composition consisting of fifty pounds 
of paper pulp, fifty pounds of powdered soapstone, 
twenty-five pounds of asbestos fiber and three quarts 
of a 33° Baume solution of soluble glass. 

No. 16. For a Design. 

To all whom it may concern: 

Be it known that I, , a 

citizen of the United States, residing at 

, in the county of 

and State of {or, subject, 

etc.), have invented a new, original, and ornamental 
Design for Watch-Cases, of which the following is a 
specification, reference being had to the accompany- 
ing drawing, forming part thereof. 

The figure is a plan view of a watch case, showing 
my new design. 

I claim: 

The ornamental design for a watch case, as shown. 



749 



DESIGIT. 



No. 16 



Thje size cf fAe skje^//cccst 6e 
excu^ lOx/S i/tokes. See rule ^{ij. 




-This space mustbe ef^Ttt zrtc/ces.- 



No. 17 APPENDIX OF FORMS. 750 

Design : This descriptive language illustrates, in connection 
with the drawing of this case, the utter futility of attempting 
by words to describe the appearance of an object which may 
be perceived immediately upon inspection of a picture thereof. 
In designs the appearance is the new thing which is to be se- 
cured by a patent. Words do not explain, but rather confuse, 
when added to the disclosure of the drawing. For this reason 
such descriptive material should be reduced to a minimum, or, 
better still, entirely eliminated from design patent specifica- 
tions. 

Freeman, 104 0. G. 1396. 
(It is believed the above dicta is more general in its lan- 
guage than is now .warranted by the decisions.) — Ed. 

"In the testimony whereof," immediately preceding the sig- 
nature, is surplusage. 

Pappenhagen, 79 Ms. D. 157. 

No. 17. For a Caveat. 

(This form is obsolete; law relating to caveats re- 
pealed by act of July 1, 1910.) 

OATHS. 

No. 18. Oath to Accompany an Application for 
United States Patent. 



1-55: 



J 

,^ the above-named peti- 
tioner , being sworn {or, affirmed), depose 

and says that citi- 
zen of ^ and resi- 
dent of ^ , that 

verily believe 

to be the original, first, and* . . . . : 

inventor of the improvement in^ 

described and claimed in the annexed 

specification ; that do 

not know and do 



751 OATH FOR A PATENT. No. 18 

not believe that the same was ever known or used 
before invention or dis- 
covery thereof, or patented or described in any 

printed publication in any country before 

invention or discovery thereof, or 

more than two years prior to this application, or in 
public use or on sale in the United States for more 
than two years prior to this application; that said 
invention has not been patented in any country for- 
eign to the United States on an application filed by 

or 

legal representatives or assigns more than twelve 
months prior to this application; and that no appli- 
cation for patent on said improvement has been filed 

by or 

representatives or assigns in any country foreign to 
the United States, except as follows :^ 



Inventor's full name:^ 



Sworn to and subscribed before me this 

, day of , 19 ... . 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 

1. If the inventor be dead, the oath will be made by the 
administrator; if insane, by the guardian, conservator, or legal 
representative. In either case the affiant will declare his be- 
lief that the party named as inventor was the original and first 
inventor. 

2. If the applicant be an alien, state of what foreign coun- 
try he is a citizen or subject. 

3. Give residence address in full; as "a resident of 

in the county of , and State of ," or "of Ko. 



No. 19 APPENDIX OF FORMS. 752 

street, in the city of , county of , and 

State (Kingdom, Eepnblic, or Empire) of . " 

4. "Sole" or ''joint.'' (174 0. G. 280.) 

5. Insert title of invention. 

6. Name each country in which an application has been 
filed, and in each case give date of filing the same. If no ap- 
plication has been filed, erase the words "except as follows." 

7. All oaths must bear the signature of the affiant. 

8. , . . "When the person before whom the oath or af- 
firmation is made is not provided with a seal, his official char- 
acter shall be established by competent evidence, as by a certifi- 
cate from a clerk of a court of record or other proper officer 
having a seal." 

A certificate of the official character of a magistrate, stating 
date of appointment and term of office, may be filed in the 
Patent Office, which will obviate the necessity of separate cer- 
tificates in individual cases. 

When the oath is taken abroad before a notary public, judge, 
or magistrate, his authority should in each instance be proved 
by a certificate of a diplomatic or consular officer of the 
United States. 

No. 19. Oath to Accompany an Application for 
United States Patent for Design. 

1 

\ss: 

J 

,^ the above-named peti- 
tioner , being sworn {or, affirmed), depose 

and say that , citi- 
zen oP and resi- 
dent oP , that .... 

verily believe 

to be the original, first, and* 

inventor of the design for^ 

described and claimed in the annexed 

specification ; that do 

not know and do not believe that the same 

was ever known or nsed before 

invention thereof, of patented or described in any 



753 OATH FOE A DESIGN. No. 19 

printed publication in any country before 

invention thereof, or more than two 

years prior to this application, or in public use or 
on sale in the United States for more than two years 
prior to this application; that said design has not 
been patented in any country foreign to the United 

States on an application filed by 

or legal representatives or 

assigns more than four months prior to this applica- 
tion; and that no application for patent on said de- 
sign has been filed by or 

representatives or assigns 

in any country foreign to the United States, except 
as follows : \ 



Inventor's full name:^-^ 



Sworn to and subscribed before me this 

day of , 19 ... . 

[seal.] * , 

[Signature of justice or notary.] 



[Official character.] 

1. If the inventor be dead, the oath will be made by the 
administrator; if insane, by the guardian, conservator, or legal 
representative. In either case the affiant will declare his belief 
that the party named as inventor was the original and first 
inventor 

2. If the applicant be an alien, state of what foreign coun- 
try he is a citizen or subject. 

3. Give residence address in full; as "a resident of 

in the county of , and State of ," or "of No. 

street, in the city of , county of , and 

State (Kingdom, Eepublic, or Empire) of " 

4. "Sole" or "joint" (124 0. G. 280). 

5. Insert title of invention. 

6. Name each country in which an application has been 



No. 20 APPENDIX OF FORMS. 754 

filed, and in each case give date of filing the same. If no ap- 
plication has been filed, erase the words "except as follows." 

7. All oaths must bear the signature of the affiant. 

8. . . . "When the person before whom the oath or af- 
firmation is made is not provided with a seal, his official char- 
acter shall be established by competent evidence, as by a cer- 
tificate from a clerk of a court of record or other proper of- 
ficer having a seal." 

A certificate of the official character of a magistrate, stating 
date of appointment and term of office, may be filed in the 
Patent Office, which will obviate the necessity of separate cer- 
tificates in individual cases. 

When the oath is taken abroad before a notary public, judge, 
or magistrate, his authority should in each instance be proved 
by. a certificate of a diplomatic or consular officer of the 
United States. 

A case on the subject-matter of this form. 
Arns, 127 0. G. 3644. 

No. 20. By an Applicant for a Reissue (Inventor). 

[When the original patent is claimed to be inoperative or in- 
valid "by reason of the patentee claiming as his own inven- 
tion or discovery more than he had a right to claim as new," 
this form can be modified accordingly.] 



fss: 



, the above-named peti- 
tioner, being duly sworn {or, affirmed), deposes and 
says that he does verily believe himself to be the 

original, first, and ^ inventor 

of the improvement set forth and claimed in the fore- 
going specification and for which improvement he 
solicits a patent; that deponent does not know and 
does not believe that said improvement was ever 
before known or used; that deponent is a citizen of 

the United States of America, and resides at 

, in the county of 

and State of ;" that 



755 PETITION FOR REISSUE. No. 21 

deponent verily believes that the letters patent re- 
ferred to in the foregoing petition and specification 
and herewith surrendered are inoperative {or, in- 
valid), for the reason that the specification thereof 
is defective {or, insufficient), and that such defect {or, 

insufficiency) consists particularly in^ 

; and deponent further says that the errors 

which render such patent so inoperative {or, invalid) 
arose from inadvertence {or, accident, or mistake), 
and without any fraudulent or deceptive intention 
on the part of deponent;"* that the following is a true 
specification of the errors which it is claimed consti- 
tute such inadvertence {or, accident, or mistake) re- 
lied upon f ; that such errors 

so particularly specified arose {or, occurred) as fol- 
lows :^ 

Inventor's full name:i 

I 

Subscribed and sworn to before me this 

day of , 19 ... . 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 

1. "Sole" or "joint." 

2. Eule 46. 

3. Eule 87. 

4. Eule 87 (5). 

No. 21. By an Applicant for a Reissue (Assignee). 

[To be used only when the inventor is dead.] 



fSS: 

J 

, the above-named peti- 
tioner, being duly sworn {or, affirmed), deposes and 



No. 22 APPENDIX OF FORMS. 756 

says that lie verily believes that the aforesaid letters 

patent granted to are {here 

follows Form 20, the necessary changes being made) ; 
that the entire title to said letters patent is vested in 

him ; and that he verily believes the said 

to be the first and original inventor 



of the invention set forth and claimed in the fore- 
going amended specification; and that the said 

is now deceased. 



Sworn to and subscribed before me this 

day of , 19 ... . 

[seal.] , 

[Signature of justice or notary.] 



k [Official character.] 

No. 22. Supplemental Oath to Accompany a Claim 
for Matter Disclosed but not Claimed in an Orig- 
inal Application. 



iss: 

J 

, whose application for 

letters patent for an improvement in 

, serial No , was 

filed in the United States Patent Office on or about 
the day of 

, 19 , being duly sworn {or, affirmed) , 

deposes and says that the subject matter of the fore- 
going amendment was part of his invention, was in- 
vented before he filed his original application, above 
identified, for such invention, was not known or used 
before his invention, was not patented or described 
in a printed publication in any country more than two 



757 OATH AS TO LOSS OF PATENT. No. 23 

years before his application, was not patented in a 
foreign country or an application filed by his legal 
representatives or assigns more than twelve months 
before his application, was not in public use or on 
sale in this country for more than two years before 
the date of his application, and has not been aban- 
doned. 



Sworn to and subscribed before me this . . ." 

, day of , 19 ... . 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 
No. 23. Oath as to the Loss of Letters Patent. 



fss: 
J 
, being duly sworn {or, 

affirmed) , depose and say that the 

letters patent No , granted 

to him, and bearing date on the 

day of , 19 , 

have been either lost or destroyed; that he has made 
diligent search for the said letters patent in all places 
where the same would probably be found, if existing, 
and that he has not been able to find them. 



Subscribed and sworn to before me this 

day of , 19 ... . 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 



No. 24 APPENDIX OF FORMS. 758 

No. 24. Oath of Administrator as to the Loss of 
Letters Patent. 



[ss: 

J 

, being duly sworn, de- 
pose and say that he is administra- 
tor of the estate of , deceased, 

late of , in said county ; that 

the letters patent No , granted 

to said , and bearing date of 

the day of 

. , . .\ ,19, , have been lost or destroyed, 

as he verily believes ; that he has made diligent search 
for the said letters patent in all places where the 
same would probably be found, if existing, and espe- 
cially among the papers of the decedent, and that he 
has not been able to find said letters patent. 



Administrator, etc. 

Subscribed and sworn to before me this 

day of , 19 ... . ' 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 
No, 25. Power of Attorney After Application Filed. 

[If the power of attorney be given at any time other than that 
of making application for letters patent, it will be in substan- 
tially the following form:] 

To the Commissioner of Patents: 

The undersigned having, on or about the 

day of , 

19 , made application for letters patent for 



759 KEVOCATION OF POWER OF ATTORNEY. No. 26 

an improvement in {serial 

number ), hereby appoints 

/of 

in the county of and 

State of , his attorney, with 

full power of substitution and revocation, to prosecute 
said application, to make alterations and amendments 
therein, to receive the patent, and to transact all busi- 
ness in the Patent Office connected therewith. 

Signed at , in the county 

of , State of 

, this day 

of ,19 



1. If the power of attorney be to a firm, the name of each 
member of the firm must be given in full. 

No. 26. Revocation of Power of Attorney. 

To the Commissioner of Patents: 

The undersigned having, on or about the 

day of , 

19 , appointed , of 

, in the county of 

and State of , 

his attorney to prosecute an application for letters 
patent, which application was tiled on or about the 

day of 

,19 , for an improvement in ........ 

{serial number ), 

hereby revokes the power of attorney then given. 

Signed at , in the county 

of and State of 

, this day 

of 19 



No. 27 APPENDIX OF FOEMS. 760 

No. 27. Amendment.^ 

To the Commissioner of Patents: 

In the matter of my application for letters patents 

for an improvement in , 

filed ,19 (serial 

number ) , I hereby amend 

my specification as follows: 

By striking out all between the 

and lines, inclu- 
sive, of page ; 

By inserting the words " , " 

after the word ' ' , " in the 

line of the 

claim ; and 

By striking out the claim 

and substituting therefore the following: 

Signed at , in the county 

of and State of 



By , 

His Attorney in Fact. 

1. In the preparation of all amendments a separate paragraph 

should be devoted to each distinct erasure or insertion, in order 
to aid the Office in making the entry of the amendment into 
the case to which it pertains. 

DISCLAIMERS. 

No. 28. Disclaimer After Patent. 

To the Commissioner of Patents: 

Your petitioner, , a citi- 
zen of the United States, residing at 

, in the county of 



761 DISCLAIMER DURING INTERFERENCE. No. 29 

and state of {or, subject, 

etc.), represents that in the matter of a certain im- 
provement in , for which let 

ters patent of the United States No. 

.... were granted to , 

on the day of 

, 19 , he is {Jiere state the exact 

interest of the disclaimaHt ; if assignee, set out liber 
and page where assignment is recorded), and that he 
has reason to believe that through inadvertence (ac- 
cident or mistake) the specification and claim of said 
letters patent are too broad, including that of which 
said patentee was not the first inventor. Your peti- 
tioner, therefore, hereby enters this disclaimer to that 
part of the claim in said specification which is in the 
following words, to wit: 

Signed at , in the county 

of and State of 

, this day 

of ,19 



Witness ; 



No. 29. Disclaimer During Interference. 

Interference. 

V. (^Before the examiner of interferences. 

J 

Subject matter : 

To the Commissioner of Patents: 

Sir : In the matter of the interference above noted, 

under the provisions of and for the purpose set forth 



No. 30 APPENDIX OF FOEMS. 762 

in Rule 107, I disclaim (set forth the matter as given 
in declaration of interference) , as I am not the first 
inventor thereof. 

Signed at , in the county 

of and State of 

, this day 

of ..,19 



Witness 



APPEALS AND PETITIONS. 

No. 30. From a Principal Examiner to the Examiners 
in Chief. 

To the Commissioner of Patents: 

Sir: I hereby appeal to the examiners in chief 
from the decision of the principal examiner in the 
matter of my application for letters patent for an 

improvement in , filed 

." ,19 , serial number 

, which on the 

, 19 , was rejected the second time. 

The following are the points of the decision on which 
the appeal is taken : {Here follows a statement of the 
points on which the appeal is taken.) 

Signed at , in the county 

of and State of 

, this day 

of ,19 



763 APPEAL TO COMMISSIONER. No. 32 

No. 31. From the Examiner in Charge of Interfer- 
ences to the Examiners in Chief. 

To the Commissioner of Patents: 

Sir: I hereby appeal to the examiners in chief 
from the decision of the examiner of interferences in 
the matter of the interference between my applica- 
tions for letters patent for improvement in 

and the letters patent of 

, in which prio'rity of invention was 

awarded to said The fol- 
lowing are assigned as reasons of appeal: {Here 
should follow an explicit statement of alleged errors 
in the decision of the examiner of interferences.) 

Signed at , in the county 

of and State of 

, this day 

of ,19 



No. 32. From the Examiners-in-Chief to the Commis- 
sioner in Ex Parte Cases. 
To the Commissioner of Patents: 

Sir: I hereby appeal to the Commissioner in per- 
son from the decision of the examiners-in-chief in the 
matter of my application for letters patent for an 

improvement in , J&led .... 

,19 , serial number .... 

The following are assigned as 

reasons of appeal: {Here follow the reason as in 
Form 30.) 

Signed at , in the county 

of and State of 

, this day 

of ,19 



No. 33 APPENDIX OF FORMS. 764 

No. 33. From the Examiners-in-Chief to the Com- 
missioner in Interference Cases. 

To the Commisioner of Patents: 

Sir: I hereby appeal to you in person from the 

decision of the examiners-in-chief, made 

, 19 , in the interference between 

my application for letters patent for improvement in 

and the letters patent of 

, in which priority of inven- 
tion was awarded to said 

The following are assigned as reasons of appeal: 
{Here should follow an explicit statement of the al- 
leged errors in the decision of the examiners-in-chief. 

Signed at , in the county 

of and State of 

, this day 

of ,19 



No. 34. Petition from a Principal Examiner to the 
Commissioner. 

Application of 

Serial number 

Subject of invention 

To the Commisioner of Patents: 

Your petitioner avers — 

First. That he is the applicant above named. 

Second. That said application was filed on the 

day of 

19 

Third. That when so filed said application con- 
tained claims. 

Fourth. That your petitioner was informed by 
office letter of the 19 



765 EXAMINER TO COMMISSIONER. No. 34 

(1) that his claim was ren- 
dered vague and indefinite by the employment of the 

words "... ," which words 

should be erased ; (2) that his 

claim was met by certain references which were 

given ; and (3) that the 

claim was mere surplusage and should be eliminated. 

Fifth. That on the day 

of your petitioner filed an 

amendment so eliminating his 

claim, and accompanied such amendment with a com- 
munication in which he declined to amend such 

claim, and asked for another ac- 
tion thereon. 

Sixth. That your petitioner was then informed by 

office letter of the day of 

that the former require- 
ment relating to claim would 

be adhered to, and that no action would be had on 
the merits of either claim until said amendment so 
required had been made. 

Wherefore your petitioner requests that the exam- 
iner in charge of such application be advised that 

such amendment so required by him to said 

claim be not insisted upon and di- 
rected to proceed to examine both said remaining 
claims upon their merits. 

A hearing of this petition is desired on the 

day of , 

19 



Applicant. 

> 

Attorney for Applicant. 



No. 35 APPENDIX OF FOBMS. 766 

No. 35. Petition for Copies of Rejected and Aban- 
doned Applications. 

To the Commisioner of Patents: 

The petition of , a resi- 
dent of , in the county of 

and' State of 

, respectfully shows : 

First. That on the day 

of , 19 , patent No. 

issued to one 



Second. That your petitioner is informed and be- 
lieves that on the day of 

, 19 , said patentee 

filed in the United States Patent Office an applica- 
tion for patent for improvement in 



Third. That your petitioner verily believes that 
said application has not been prosecuted during the 
past two years and upward; and he also verily be- 
lieves that the last action had therein was on or about 

the day of 

...,19.... 

Fourth. That said application has therefore be- 
come and now stands abandoned. 

Fifth. That on the day 

of , 19 , said paten- 
tee began suit, in the circuit court of the United 

States for the district of 

, against your petitioner, 

which suit is based upon said patent, and the same is 
now pending and undetermined. 

Sixth. Your jDetitioner is informed and believes 
that to enable him to prepare and conduct his defense 



767 PEELIMINARY STATEMENT. No. 36 

in such suit it is material and necessary that he be 
allowed access to and copies of the files of such 
abandoned case. 

Seventh. Your petitioner therefore requests that 

he or , in his behalf and as 

his attorney, be permitted to inspect and be furnished 
copies of all or any portion of such case. 



Petitio7ier. 

By , 

His Attorney. 



fss: 



On this day of 

, 19 , before me, a notary 

public in and for said county and State, personally 

appeared , the above-named 

attorney, who, being by me duly sworn, deposes and 
says that he has read the foregoing petition and 
knows its contents, and that the same is true, except 
as to the matters therein stated on information or 
belief, and as to those matters he believes it to be 
true. 



Notary Public. 

XoTE — A copy of this petition must be served upon the ap- 
plicant named in the abandoned application or upon his at- 
torney of record. 

A case on the subject-matter of this form. 
' Marsh Engineering Co., 193 0. G. 510. 

No. 36. Preliminary Statement of Domestic Inventor. 

1 Interference' in the United States 

V. \ Patent Office. Preliminary state- 

J ment of 

, of , 



No. 36 APPENDIX OF FORMS. 768 

in the county of , and 

state of , being duly sworn 

{or, affirmed), doth depose and say that he is a party 
to the interference declared by the Commissioner of 
Patents , 19 , be- 
tween 's application for let- 
ters patent, filed ,19 , 

serial number , and the pat- 
ent to , granted 

,19 , numbered 

, for a ; that he 

conceived the invention set forth in the declaration 

of interference^ on or about the 

day of , 19 ". . . ; 

that on or about the day of 

, 19 , he first made 

drawings of the invention {if he has not made a draw- 
ing, then he should say that no drawing of the inven- 
tion in issue has been made) ; that on the 

day of , 

19 , he made the first written description of 

the invention {if he has not made a written descrip- 
tion of the invention, he should so state) ; that on 

or about the day of 

, - , 19 , he first explained the 

invention to others ; that he first embodied his inven- 
tion in a full-size machine, which was completed about 

the day of 

, 19 , and that on the 

day of , 19 , 

the said machine was first successfully operated, in 

the town of , county of .... 

, and State of 

, and that he has since continued to use 



769 PEELIMINABY STATEMENT. No. 37 

the same, and that he has manufactured others for 
use and sale to the following extent, viz. : {if he has 
not embodied the invention in a full-size machine, he 
should so state; and if he has embodied it but has 
not used it, he should so state). 



[Signature of inventor.] 

Subscribed and sworn to before me this 

day of , 

19 



[Signature of justice or notary.] 

J 

[Official character.] 

1. If the party has doubts as to whether the matter of his 
application is properly involved in the issue as declared, then in 
lieu of the term "the invention set forth in the declaration of 
interference" he may say "the invention contained in the 
claims of my application (or patent) declared to be involved in 
this interference," and should specify such claims by number. 

No. 37. Preliminary Statement of Foreign Inventor. 

1 Interference in United States Pat- 

V. (■ ent Office. Preliminary statement 

J of 

, of London, in the county 

of Middlesex, England, being duly sworn, doth depose 
and say that he is a party to the interference de- 
clared by the Commissioner of Patents, 

, 19. , between his application for 

patent, filed ,19 ., 

serial number , and the pat- 
ent of , granted 

, 19 , No 

, for an improvement in ; 

that he made the invention set forth in the declaration 



No. 37 APPENDIX OF FOEMS. 770 

of interference/ being at that time in England; that 
patents for such invention were applied for and ob- 
tained as follows: 

Application filed in Great Britain, 

, 19 , patent dated 

,19 , No. ; 

published the day of 

, 19 , and sealed the .... 

day of .;.... , 

19 ; application filed in France 

, 19 , patent dated 

,19 ,No ; 

published the day of 

, 19 , and sealed the .... 

day of , 

19. {If a patent has not been obtained in any 

country it should be so stated.) 

That such invention was fully described in a mag- 
azine published at , on the 

day of 

; 19 , by , en- 
titled {see page 

of such magazine), and in the follow- 
ing newspapers : , of 

,19, ; 

, published at , on 

,19 {If the inven- 
tion was never described in a printed publication it 
should be so stated.) 

The knowledge of such invention was introduced 
into the United States under the following circum- 
stances : On , 19 , 

the said wrote a letter to 

, residing at 



771 PEELIMINAEY STATEMENT. No. 37 

, State of , de- 
scribing such invention and soliciting his services in 
procuring a patent therefor in the United States. 
This letter, he is informed and believes, was received 

by the said on 

, 19 Also on 

, 19 , he wrote a letter to the firm 

of , of , 

State of , describing such in- 
vention and requesting their assistance in manufac- 
turing and putting it on the market, which letter, he 
is informed and believes, was received by them on 
, 19 Such inven- 
tion was manufactured by such firm and described 
in their trade circulars, as he is informed and verily 

believes, on or about the 

day of , 19 {If 

the invention has not been introduced into the United 
States otherwise than hy the application papers, it 
should he so stated, and the date at which such papers 
were received in the United States alleged.) 

> 

[Signature of inventor.] 

Subscribed and sworn to before me this 

day of , 19 ... . 

? 

[Signature of justice or notary.] 

J 

[Official character.] 

1. If the party has doubts as to whether the matter of his 
application is properly involved in the issue as declared, then in 
lieu of the terms "the invention set forth in the declaration 
of interference," he may say, "the invention contained in the 
claims of my application (or patent) declared to be involved 
in tbis interference," and should specify such claims by number. 



No. 38 APPENDIX OF FOEMS. 772 

ASSIGNMENTS. 

No. 38. Of an Entire Interest in an Invention Before 
the Issue of Letters Patent. 

Whereas I, , of 

, county of 



and State of , have invented 

a certain improvement in , 

for which I am about to make application for letters 

patent of the United States ; and whereas 

, of . . . , , county 

of , and State of 

, is desirous of acquiring an interest 

therein : 

Now, therefore, in consideration of 

dollars, the receipt of which is hereby 

acknowledged, I, , by these 

presents do sell, assign, and transfer unto 

the full and exclusive right to the said 

invention, as described in the specification executed 

by me on the day of 

, 19 , preparatory to ob- 
taining letters patent of the United States therefor; 
and I hereby request the Commissioner of Patents to 

issue said letters patent to 

as the assignee, for his interest, for the sole use and 

behoof of said and his legal 

representatives. 

Executed day of 

,19 

[seal.] 

In presence of: 



773 ENTIEE INTEREST I]Sr PATENT. No. 39 

(If assignment, grant, or conveyance be acknowledged as 
provided for by Eule 185, the certificate will be prima facie 
evidence of the execution of such assignment, grant, or con- 
veyance.) 

No. 39. Of the Entire Interest in Letters Patent. 

Whereas I, , of 

, county of , 

State of , did obtain letters 

patent of the United States for an improvement in 

, which letters patent are 

numbered , and bear date 

the day of 

, 19 ; and whereas I am now the 

sole owner of said patent ; and whereas 

, of , county of 

, and State of 

, is desirous of acquiring the entire in- 
terest in the same : 

NoWj therefore, in consideration of the sum of 

dollars, the receipt of which 

is hereby acknowledged, I, , 

by these presents do sell, assign, and transfer unto 

the said , the whole right, 

title, and interest in and to the said letters patent 
therefor aforesaid; the same to be held and enjoyed 

by the said . . . : , for his own 

use and behoof, and for his legal representatives, to 
the full end of the term for which said letters patent 
are granted, as fully and entirely as the same would 
have been held by me had this assignment and sale 
not been made. 

Executed day of 

,19 

[L. S.] 



No. 40 APPENDIX OF FOEMS. 774 

In presence of: 



(See note under Form 38.) 

No. 40. Of an Undivided Interest in Letters Patent. 

Whereas I, , of 

, county of , 

State of , did obtain letters 

patent of the United States for an improvement in 

, which letters patent are 

numbered , and bear date 

the day of 

; and whereas , 

of , county of 

, State of , is 

desirous of acquiring an interest in the same : 

Now. therefore, in consideration of the sum of 

dollars, the receipt of which 

is hereby acknowledged, I, , 

by these presents do sell, assign, and transfer unto 
the said , the undivided one- 
half part of the whole right, title, and interest in 
and to the said invention and in and to the letters 
patent therefor aforesaid; the said undivided one- 
half part to be held by , 

for his own use and behoof, and his legal representa- 
tives, to the full end of the term for which said letters 
patent are granted, as fully and entirely as the same 
would have been held by me had this assignment 
and sale not been made. 

Executed day of 

,19 

[L. S.] 



775 TERRITORIAL INTEREST. No. 41 

In presence of: 



(See note under Form 38.) 

No. 41, Territorial Interest After Grant of Patent. 

Wliereas I, , of 

, connty of , 

State of , did obtain letters 

patent of the United States for an improvement in 

, which" letters patent are 

numbered • • • • , and bear date 

the day of 

, in the year 19 ; and whereas I 

am now the sole owner of the said patent and of all 
rights imder the same in the below-recited territory; 

and whereas ^ of 

, county of , 

State of , is desirous of ac- 
quiring an interest in the same: 

Now, therefore, for and in consideration of the sum 

of dollars to me in hand 

paid; the receipt of which is hereby acknowledged, I, 

, by these presents do sell, 

assign, and transfer unto the said 

all the right, title, and interest in and to the 

said invention, as secured to me by said letters pat- 
ent, for, to, and in the State of , 

and for, to, or in no other place or places; the same 

to be held by within and 

throughout the above-specified territory, but not else- 
where, for his own use and behoof, and of his legal 
representatives, to the full end of the term for which 
said letters patent are granted, as fully and entirely 



No. 42 APPENDIX OF FORMS. 776 

as the same would liave been held by me had this 
assignment and sale not been made. 

Executed day of 

,19 



In presence of: 



[L. S.] 



(See note under Form 38.) 
No. 42. License — Shop-Right. 



In consideration of the sum of 

dollars, to be paid by the firm of 

, of , in the 

county of , State of 

, I do hereby license and empower 

the said to manufacture in 

said {or, other place agreed 

upon) the improvement in , 

for which letters patent of the United States No. 

were granted to me the 

day of 

, in the year 19 , and to sell the ma- 
chines so manufactured throughout the United States 
to the full end of the term for which said letters 
patent are granted. 

Signed at , in the county 

of and State of 

, this day of 

19 



In presence of: 



777 LICENSE WITH ROYALTY. No. 43 

No. 43. License — Not Exclusive — With Royalty. 

This agreement, made this 

day of , 19 , between 

, of , 

in the county of and State 

of , party of the first part, 

and , of 

, in the county of 

and State of , party of the 

second part, witnesseth, that whereas letters patent 

of the United States No , 

for improvement in , were 

granted to the party of the first part on the 

day of , 

19 ; and whereas the party of the second part 

is desirous of manufacturing 

containing said patented improvements : Now, there- 
fore, the parties have agreed as follows : 

I. The party of the first part hereby licenses and 
empowers the party of the second part to manufac- 
ture, subject to the conditions hereinafter named, at 

their factory in , and in no 

other place or places, to the end of the term for which 

said letters patent were granted, 

containing the patented improvements, and to 

sell the same within the United States. 

II. The party of the second part agrees to make 
full and true returns to the party of the first part, 

under oath, upon the first days of 

and in each year, of 

all containing the patented 

improvements manufactured by them, 

III. The party of the second part agrees to pay to 
the party of the first part 



No. 44 APPENDIX OF POEMS. 778 

dollars as a license fee upon every 

manufactured by said party of the second 

part containing the patented improvements ; provided, 
that if the said fee be paid upon the days provided 

herein for semiannual returns, or within 

days thereafter, a discount of 

per cent shall be made from said 

fee for prompt payment. 

IV Upon a failure of the party of the second 
part to make returns or to make payment of license 

fees, as herein provided, for 

days after the days herein named, the party of the 
first part may terminate this license by serving a 
written notice upon the party of the second part; 
but the party of the second part shall not thereby 
be discharged from any liability to the party of the 
first part for any license fees due at the time of the 
service of said notice. 

In witness whereof, the parties above named have 
hereunto set their hands the day and year first above 

written at , in the county of 

and State of 



In the presence of: 



DEPOSITIONS. 
No. 44. Notice of Taking Testimony. 

, , ,19 

In the matter of the interference between the appli- 
cation of for a 



779 DEPOSITIONS. No. 4i 

machine and the patent No 

, granted 

19 , to , now pend- 
ing before the Commissioner of Patents. 
Sie: You are hereby notified that on Wednesday, 

,19 , at the office of 

, Esq., No 

Street, , , at 

o 'clock in the forenoon, I 

shall proceed to take the testimony of 

, and , all of ... . 

, as witnesses in my behalf. 

The examination will continue from day to day 
until completed. You are invited to attend and cross- 
examine. 



By , 

His Attorney. 

Signed at , in the county 

of and State of 

, this day of 

• ,19 



Witnesses 



Proof of service. 

1 

\ss: 

J 

Personally appeared before me, a 

{or, other ofl&cer) the above-named 

, who, being duly sworn, deposes 

and says that he served the above notice upon 



No. 45 APPENDIX OP PORMS. 780 

, the attorney of the said 

, at o 'clock 

of the 

day of , 19 , by leav- 
ing a copy at his oJB0.ce in , 

in the county of and State 

of , in charge of 



Sworn to and subscribed before me at 

, in the county of 

and State of , this . . . • 

day of , 19 ... . 

[seal,.] , 

[Signature of justice or notary.] 



[Official character.] 
{Service may he achnoivledged by the party upon 

whom it is made as follows: 

Service of the above notice acknowledged this .... 

of , 

19 



By , 

His Attorney. 

No. 45. Form of Deposition. 

Before the Commissioner of Patents, in the matter of 

the interference between the application of 

for a 

and Letters Patent No ^ 

granted , 19 , to 



Depositions of witnesses examined on behalf of .... 
, pursuant to the annexed no- 



781 CERTIFICATE OF OFFICER. No. 46 

tice, at the office of , No. 

Street, , , 

on , , 19 Present, 

, Esq., on behalf of 

, and , 

Esq., on behalf of 

, being duly sworn {or, 

affirmed), doth depose and say, in answer to inter- 
rogatories proposed to him by , 

Esq., counsel for , as follows, 

to wit : 

Question 1. What is your name, age, occupation, 
and residence? 

Answer I. My name is ; 

I am years of age ; I am a 

manufacturer of and reside 

at , in the State of 



Question 2, etc. 



And in answer to cross-interrogatories proposed to 

him by , Esq., counsel for 

, he saith : 

Cross-question 1. How long have yon known .... 



Answer 1. 



No. 46. Certificate of Officer. 

[To follow deposition.] 



^ss: 



I, , a notary public within 

and for the county of and 



No. 46 APPENDIX OP POEMS. 782 

state of {or, other officer, 

as the case may he), do hereby certify that the fore- 
going deposition of was 

taken on behalf of in pur- 
suance of the notice hereto annexed, before me, at 

, in the city of 

, in said county, on the 

day {or, days) of ,. 

19 ; that said witness was by me duly sworn 

before the commencement of his testimony; that the 
testimony of said witness was written out by myself 

{or, by in my presence) ; 

that the opposing party, 

was present {or, absent or represented by counsel) 
during the taking of said testimony; that said testi- 
mony was taken at , and was 

commenced at o'clock .... 

on the 

of , 19 , was contin- 
ued pursuant to adjournment on the , 

(etc.), and was concluded on the 

of said month ; that the deposi- 
tion was read by, or to, each witness, before the wit- 
ness signed the same; that I am not connected by 
blood or marriage with either of said parties, nor 
interested directly or indirectly in the matter in con- 
troversy. 

In testimony whereof, I have hereunto set my hand 

and affixed my seal of office at , 

in said county, this day of 

, 19.... 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 



783 ARGUMENT OF CAUSES. No. 8 

{The magistrate will then append to the deposition 
the notice under which it was taken, and will seal up 
the testimony and direct it to the Commissioner of 
Patents, placing upon the envelope a certificate in 
substance as follows:) 

I hereby certify that the within deposition of .... 

{if the package contains more 

than one deposition, give all the names), relating to 

the matter of interference between 

and , was taken, 

sealed up, and addressed to the Commissioner of Pat- 
ents by me this day of .... 

, 19.... 

[seal.] , 

[Signature of justice or notary.] 



[Official character.] 

APPEALS FROM THE COMMISSIONER OF PATENTS 

TO THE COURT OF APPEALS OF THE 

DISTRICT OF COLUMBIA. 

An intention to appeal does not constitute an appeal, or even 
a step in that direction. If applicant had done something, 
though imperfectly, he might have come within the decision 
in Alaska Gold Mining Co. v. Keating, 116 Fed. 561. He is 
supposed to know the rules, and an appeal not taken within 
the 40 days refused reinstatement. 
Hitchcock, 247 0. G. 965. 

See Eule 148. 

COUET EULES. 

No. 8. Argument of Causes and the Preparation 
Therefor. 

1. No more than two counsels shall be heard for 
each party', appellant and appellee, in the argument 
of the cause, except by special leave of the Court, 
upon sufficient reason shown. 



No. 8 APPENDIX OF FORMS. 784 

2. Only one hour on each side shall be allowed in 
the argument, unless by special leave the time is 
extended by the Court before the argument is com- 
menced; but counsel, in order to avail themselves of 
the opportunity to apply for additional time, must 
make request therefor to the Court, accompanied by 
a copy of their printed brief, at least five days before 
the case is liable to be called for argument. The 
time may be apportioned between counsel on the 
same side, at their discretion. In all cases, however, 
a full and fair opening must be made. 

3. For the appellant, there shall be filed with the 
clerk of the court fifteen copies of his printed brief 
within thirty days after the record shall have been 
printed. Provided, however, That if such period of 
thirty days expires in vacation, and prior to Sep- 
tember 10th, appellant shall have until said date to 
file his brief. One copy of appellant's brief shall, 
upon application, be furnished to each of the counsel 
on the opposite side ; and provided further, That at 
the time of filing his brief the appellant shall serve 
a copy of the same upon the appellee or his counsel 
of record in the trial court. The brief for the ap- 
pellant shall contain, in the order here stated : 

(a) A concise statement of the case, presenting 
succinctly the questions involved and the manner in 
which they are raised. 

(b) Such of the errors as shall be relied upon. 

(c) A clear statement of the points of law or fact 
to be discussed, with reference to the pages of the 
record and the authorities relied on in support of 
each point. 

(d) "Whenever a decision of this Court, that has 
been published in the official reports of the Court, 



785 AEGUMENT OF CAUSES. No. S 

shall be cited in a brief, the reference shall include 
the volume and page of the report wherein the same 
has been published. 

(e) Every brief of more than twenty pages shall 
contain on its front fly leaves a subject index, with 
page reference, the subject index to be supplemented 
by a list of all cases referred to, together with ref- 
erences to pages where the cases are cited. 

Senior v. Senior, 24 App. D. C. 160; Cooper v. 
Sellers, 30 II. 567. 

4. For the appellee, there shall be filed with the 
clerk fifteen copies of the brief for his side of the 
case within twenty days from the filing of appellant's 
brief: Provided, That if said period of twenty days 
expires in vacation, he shall have until the first day 
of the October Term to file his brief; and it is further 
provided, That if such period of twenty days expires 
in vacation in cases appealed from the Commission of 
Patents, he shall have until the first Monday in 
November. Such brief shall be of like character to 
that required of the appellant, except that no assign- 
ment of error is required, and no statement of the 
case, unless that presented by the appellant be con- 
troverted, or denied to be sufficiently full and com- 
plete to present the question for review. 

The following sections added to Section 4, June 6, 
1919: 

(a) No party will be permitted to file a brief 
after the expiration of the time allowed for that pur- 
pose by Sections 3 and 4 of this Rule, without per- 
mission of the Court granted for good cause shown. 

(b) "When a case is called for hearing, if the 
appellant's brief is not on file, the appeal may be 
dismissed. 



No. 21 APPENDIX OF FORMS. 786 

5. Errors not assigned, according to the rule of 
the Court, will be disregarded, though the Court, at 
its option, may notice and pass upon a plain error 
not assigned. 

6. When, according to the provision of this rule, 
the appellee is in default, he will not be heard ex- 
cept upon request of the Court. 

7. The appellant in this Court shall be entitled to 
open and conclude the case; but where there are 
cross-appeals they shall be argued together as one 
case, and the plaintiff in the Court below shall be 
entitled to open and conclude the argument in this 
court. 

8. When a case is called for argument at two 
successive terms, and at the call at the second term 
neither party is prepared to proceed with the argu- 
ment, the appeal shall be dismissed at the cost of the 
appellant, unless sufficient cause be shown for fur- 
ther postponement. 

9. The case shall not be placed on the assignment 
for hearing until after the time for the filing of the 
brief for the appellee shall have expired. Provided,, 
That parties may, by agreement, expedite the print- 
ing of the transcript and the printing of briefs, and 
liave the appeal assigned for hearing at an earlier 
day. 

No. 21. Appeals from the Commissioner of Patents. 

1. All certified copies of papers and evidence on 
appeal from the decision of the Commissioner of Pat- 
ents, authorized by section 9 of the act of Congress, 
approved February 9, 1893, shall be received by the 
clerk of this court, and the cases, by titling and num- 
ber as they appear on the record in the Patent Office, 



787 appeaijS feom coMMissioisrEK. No. 21 

shall be placed on a separate docket from the docket 
of the cases brought into this court by appeal from 
the supreme court of the District of Columbia, to be 
designated as the ^ ' Patent Appeal Docket ; ' ' and upon 
filing such copies the party appellant shall deposit 
with the clerk, or secure to be paid as demanded, an 
amount of money sufficient to cover all legal costs 
and expenses of said appeal; and upon failure to do 
so his appeal shall be dismissed. The clerk shall, 
under this titling of the case on the docket, make brief 
entries of all papers filed and of all proceedings had 
in the case. 

2. The appellant, upon complying with the preced- 
ing section of this rule, shall file in the case a petition 
addressed to the court, in which he shall briefly set 
forth and show that he has complied with the require- 
ments of sections 4912 and 4913 of the Revised Stat- 
utes of the United States to entitle him to an appeal, 
and praying that his appeal may be heard upon and 
for the reasons assigned therefor to the commis- 
sioner; and said appeal shall be taken within forty 
days from the date of the ruling or order appealed 
from and not afterwards. 

If the petition for an appeal and the certified copies 
of papers and evidence on appeal mentioned in this 
and the preceding section of this rule shall not be 
filed and the case duly docketed in this court within 
forty days {exclusive of Sundays and legal holidays) 
from the day upon which notice of appeal is given to 
the Commissioner of Patents, the commissioner, upon 
such facts being brought to his attention by motion 
of the appellee, duly served upon the appellant or 
his attorney, may take such further proceedings in 
the case as may be necessary to dispose of the same. 



No. 21 APPENDIX OP FORMS. 788 

as though no notice of appeal had ever been given. 

3. The clerks shall provide a minute book of his 
office, in which he shall record every order, rule, 
judgment, or decree of the court in each case, in the 
order of time in which said proceedings shall occur; 
and of this book the index shall be so kept as to show 
the name of the party applying for the patent, the 
invention by subject matter or name, and, in the cases 
of interference, the name of the party with whose 
pending application or unexpired patent the subse- 
quent application is supposed to interfere. 

4. The cases on this docket shall be called for ar- 
gument on the second Tuesday of January, March, 
May, and November in each year, and the cases shall 
be called in regular order as they may stand on the 
docket. A copy of these rules shall be furnished to 
the Commissioner of Patents ; and it shall be the duty 
of the clerk of this court to give special notice to the 
said commissioner at least fifteen days immediately 
"preceding the times thus respectively fixed for the 
hearing of said cases; the said notice to name the 
place of the sitting of the court, the titling of the 
cases on the docket of this court, the respective num- 
bers thereof, and the number of each case as it ap- 
pears of record in the Patent Office; and thereupon 
the commissioner shall give notice to the parties in- 
terested or concerned by notice addressed to them 
severally by mail. 

5. The clerk shall furnish to any applicant a copy 
of any paper in any of said appeals on payment of 
the legal fees therefor. 

6. The appeals from the Commissioner of Patents 
shall be subject to all the rules of this court provided 
for other cases therein, except where such rules, from 



789 SUNDAYS AND HOLIDAYS. No. 27 

the nature of the case, or by reason of special provi- 
sions inconsistent therewith, are not applicable. 

7. Models, diagrams, and exhibits of material form- 
ing part of the evidence taken in the court helow or 
in the Patent Office in any case pending in this court 
on writ of error or appeal shall he placed in the cus- 
tody of the clerk of this court at least three days 
before the case is heard or submitted. 

8. All models, diagrams, and exhibits of material 
placed in the custody of the clerk for the inspection 
of the court on the hearing of the case must be taken 
away by the parties within twenty days after the 
case is decided. When this is not done, it shall be 
the duty of the clerk to notify the counsel in the case 
and the Commissioner of Patents, by mail or other- 
wise, of the requirements of this rule; and if the 
articles are not removed within ten days after the 
notice is given, he shall destroy them or make such 
other disposition of them as to him may seem best. 

No. 22. Opinions of Lower Court and Commissioner 
of Patents Made Part of Record. 

Whenever the judgment, decree or order appealed 
from is based upon or has reference to a written opin- 
ion filed in the case by the court below, such opinion 
shall constitute a part of the transcript to be sent to 
this court; and such opinion, and also the written 
reasons or grounds assigned by the Commissioner of 
Patents in appeals from the Patent Office, shall be 
printed as part of the record to be printed under 
Rule 6. 

No. 27. Sundays and Legal Holidays. 

That whenever days are mentioned in the foregoing 
rules as limitations of time, they shall be construed 



No. 27 APPENDIX OF POEMS. 790 

to exclude Sundays and legal holidays, but to include 
Saturday half holidays. 

iJsrsTBucTioisrs to appellants. 

The act of Congress creating the court of appeals 
of the District of Columbia, approved February 9, 
1893, gives to that court jurisdiction of appeals from 
final decisions of the Commissioner of Patents both 
in ex parte cases and in interference cases. 

Where an appeal of either class is to be prosecuted 
to the court of appeals of the District of Columbia, 
the first step is to file with the Commissioner of Pat- 
ents a notice of appeal, together with an assignment 
of reasons of appeal. This step must be taken within 
forty days, exclusive of Sundays and legal holidays, 
but including Saturday half holidays, from the date 
of the decision of the Commisioner of Patents sought 
to be reviewed. 

The next step in the prosecution of such an appeal 
is to file with the clerk of the court of appeals of the 
District of Columbia a certified transcript of the rec- 
ord and proceedings in the Patent Office relating to 
the case in question, together with a petition for ap- 
peal, addressed to the court of appeals of the District 
of Columbia, make a deposit of $15, and have the 
appearance of a member of the bar of that court 
entered for the appellant. 

The notice of appeal and reasons of appeal re- 
quired to be served upon the Commissioner of Pat- 
ents may be signed by the appellant or by his attor- 
ney of record in the Patent Office, but the petition 
for an appeal that is filed in the court of appeals of 
the District of Columbia must be signed by a member 
of the bar of the court of appeals of the District of 



791 SUNDAYS AND HOLIDAYS. No. 27 

Columbia, who should enter a regular appearance in 
the case in the clerk's office. 

After the petition for the appeal, the certified tran- 
script, and the docket fee of $15 have been lodged in 
the office of the clerk of the Court of Appeals of the 
District of Columbia, the clerk will send to the solic- 
itor of record an estimate of the cost of printing the 
petition, transcript, etc. 

When the amount called for is deposited, the clerk 
iV'ill cause the printing to be done under his super- 
vision, and when the printing is completed the case 
will be put on the calendar for hearing at the next 
term at which patent appeals are heard. 

In interference cases the clerk is authorized to re- 
ceive printed copies of the evidence, such as have 
been used in the Patent Office, thus saving to the 
appellant the cost of reprinting such evidence. When 
such printed copies are supplied, twenty-five copies 
must be furnished. 

As above stated, the notice of appeal and the rea- 
sons of appeal are required to be filed with the Com- 
missioner of Patents within forty days, exclusive of 
Sundays and legal holidays, but including Saturday 
half holidays, of the date of the decision appealed 
from, but the petition for appeal and the certified 
transcript which are to be filed in the Court of Ap- 
peals of the District of Columbia are required to be 
filed in that court .within forty days, exclusive of 
Sundays and legal holidays, hut including Saturday 
half holidays, from the time of the giving of the 
notice of appeal; that is to say, if the decision com- 
plained of was rendered, for instance, on the 1st day 
of July, 1906, the party aggrieved might file his no- 
tice of appeal, with the reasons of appeal, at any 



No. 1 APPENDIX OF FORMS. 792 

time within forty days, exclusive of Sundays and 
legal holidays, but including Saturday half holidays, 
thereafter; but if he filed his notice of appeal and 
reasons therefor on the 10th day of July, 1906, he 
would be required to file his petition for appeal and 
the certified transcript in the Court of Appeals of 
the District of Columbia within forty days, exclusive 
of Sundays and legal holidays, hut including Satur- 
day half holidays, of the 10th day of July, 1906. 

For convenience of appellants and to secure uni- 
formity in practice the following forms are suggested 
as guides in the prosecution of patent appeals : 

No. 1. Form of Notice of Appeal to the Court of Ap- 
peals of the District of Columbia in an Ex Parte 
Case, with Reasons of Appeal and Request for 
Transcript. 

IN THE UNITED STATES PATENT OFFICE. 

In re application of 1 



Serial No 

Filed 

Improvements in. 



J 

To the Commissioner of Patents: 

Sie: You are hereby notified of my appeal to the 
court of appeals of the District of Columbia from 

your decision, rendered on or about the 

day of , 19 , 

rejecting my above-entitled application and refusing 
me a patent for the invention set forth therein: 



793 PETITION FOE AN APPEAL,. No. 2 

The following are assigned as reasons of appeal: 
\Here insert in separate counts the specific errors com- 
plained of.] 

"By';;;;!;;;;;;;;;;;;;;;;;..; 

His Attorney. 

No. 2. Form of Petition for an Appeal to the Court 
of Appeals of the District of Columbia in an Ex 
Parte Case. 

IN THE COUET OF APPEALS OF THE DISTEICT OF COLUMBIA. 

In re application of ] 

Serial No | 

} 



Filed 

Improvements in. 



J 

To the Court of Appeals of the District of Columbia: 

Your petitioner, , of .... 

, in the county of 

, and State of , 

respectfully represents: 

That he is the original and first inventor of certain 
new and useful improvements in 

That on the day of .... 

, 19 , in the manner pre- 
scribed by law, he presented his application to the 
Patent Office, praying that a patent be issued to him 
for the said invention. 

That such proceedings were had in said office upon 

said application ; that on the 

day of , 19 , it was 



No. 2 APPENDIX OP POEMS. 79'i 

rejected by the Commissioner of Patents and a patent 
for said invention was refused him. 

That on the day of .... 

, 19 , your petitioner, 

pursuant to sections 4912 and 4913, Revised Statutes, 
United States, gave notice to the Commissioner of 
Patents of his appeal to this honorable court from 
his refusal to issue a patent to him for said inven- 
tion upon said application as aforesaid, and filed with 
him, in writing, the following reasons of appeal: 

[Here recite the reasons of appeal assigned in the notice to 
the Commissioner.'] 

That the Commissioner of Patents has furnished 
him a certified transcript of the record and proceed- 
ings relating to said application for patent, which 
transcript is filed herewith and is to be deemed and 
taken as a part hereof. 

Wherefore your petitioner prays that his said ap- 
peal may be heard upon and for the reasons assigned 
therefor to the commissioner as aforesaid, and that 
said appeal may be determined and the decision of 
the commissioner be revised and reversed, that jus- 
tice may be done in the premises. 



By , 

His Attorney. 

\To lie signed here hy a memher of the bar of 
the Court of Appeals of D. C] 



Solicitor and of Counsel. 



795 NOTICE OF APPEAL. No. 3 

No. 3. Form of Notice of Appeal to the Court of 
Appeals of the District of Columbia in an Inter- 
ference Case, with Reasons of Appeal and Request 
for Transcript. 

lir THE UNITED STATES PATENT OFFICE. 
BEFOEE THE COMMISSIONER OF PATENTS. 

] Interference No 

V. \ Subject-matter: Improve- 
J ments in 

And now comes , by .... 

, his attorney, and gives notice 

to the Commissioner of Patents of his appeal to the 
Court of Appeals of the District of Columbia, from 
the decision of the said commissioner, rendered on or 

about the day of 

, 19 , awarding priority of 

invention to in the above- 
entitled case, and assigns as his reasons of appeal the 
following : 

[Here set out in separate counts the specific errors in the Com- 
missioner s decision complained o/.] 



By , 

His Attorney. 



No. 4 APPENDIX OF FORMS. 796 

No. 4. Form of Petition for an Appeal to the Court 
of Appeals of the District of Columbia in an 
Interference Case. 

IE" THE COUET OF APPEALS OF THE DISTRICT OF COLUMBIA. 

In re Interference No 

1 

Appellant, | 

i 

J 

To the Court of Appeals of the District of Columbia: 

Your petitioner, , of .... 

, in the county of 

, and State of , 

respectfully represents : 

That he is the original and first inventor of certain 
new and useful improvements in 

That on the day of .... 

. . . . , , 19 , in the manner pre- 
scribed by law, he presented his application to the 
Patent Office, praying that a patent be issued to him 
for the said invention. 

That thereafter, to wit, on the 

day of , 19 , 

an interference proceeding was instituted and de- 
clared between his said application and a pending 

application of one , serial 

No , filed 

, for a similar invention. 

That the snbject-matter of said interference as set 
forth in the official declaration was as follows: 
\Here state the issues of the interference.] 

That thereafter, to wit, on the 

day of , 19 , 



797 PKTITIOJSr EOR APPEAL. No. 4 

the case having been submitted upon the preliminary 
statements and evidence presented by the parties 
thereto, the Examiner of Interferences rendered a 
decision awarding priority of invention to 



That, pursuant to the statutes and the rules of prac- 
tice in the Patent Office in such case made and pro- 
vided, appealed from the 

said adverse decision of the Examiner of Interfer- 
ences to the Board of Examiners-in-Chief, and the 
case having been argued and submitted to said board, 

a decision was rendered by said board on the 

day of , 

19 , affirming {or, reversing) the decision of 

the Examiner of Interferences. 

That thereafter, pursuant to said statutes and 

rules, appealed from the 

said adverse decision of the Board of Examiners-in- 
Chief to the Commissioner of Patents, and the same 
coming on to be heard and having been argued and 

submitted, a decision was, on the 

day of , 19 , 

rendered by the commissioner adverse to your peti- 
tioner, affirming {or, reversing) the decision of the 
Board of Examiners-in-Chief and awarding priority 
of invention to the said 

That on the day of .... 

,19 , your petitioner, 

pursuant to sections 4912 and 4913, Revised Statutes, 
United States, gave notice to the Commissioner of 
Patents of his appeal to this honorable court from 
his decision awarding priority of invention to said 

, as aforesaid, and filed with 

him, in writing, the following reasons of appeal: 



No. 4 APPENDIX OP POEMS. 798 

[Fl&re insert reasons of appeal assigned in notice to Com- 
missioner.] 

That the Commissioner of Patents has furnished 
your petitioner a certified transcript of the record 
and proceedings relating to said interference case, 
which transcript is filed herewith and is to be deemed 
and taken as a part hereof. 

Wherefore your petitioner prays that his said ap- 
peal may be heard upon and for the reasons assigned 
therefor to the commissioner as aforesaid, and that 
said appeal may be determined and the decision of 
the commissioner be revised and reversed, that jus- 
tice may be done in the premises. 

By ,' 

His Attorney. 

[To be signed here hy a member of the bar of 
the Court of Appeals of D. C.] 

> 

Solicitor and of Counsel. 



799 WHO MAY OBTAIN A PATENT. Rule 5 



APPENDIX C 

RULES OF 1870. 

RULES AND REGULATIONS 

FOR 

PROCEEDINGS IN THE PATENT OFFICE 



United States Patent Office, 

July 15, 1870. 

The" following information and regulations are designed to be in 
strict accordance with the revised, consolidated, and amended 
law relating to patents for inventions and designs and trade-marks, 
approved July 8, 1870, which law, the only one in force on these 
subjects, is printed in pamphlet form for gratuitious distribution. 

Copious forms, to which inventors and attorneys are recommended 
to conform as nearly as possible, will be found in an appendix. 

WHO MAY OBTAIN A PATENT 

1. Any person, whether citizen or alien, being the original and 
first inventor or discoverer of any new and useful art, machine, 
manufacture, or composition of matter, or any new and useful im- 
provement thereof, may obtain a patent for his invention or dis- 
covery, subject to the conditions as to public use and abandonment 
hereinafter named. 

2. In case of the death of the inventor, the patent may be ap- 
plied for by, and will issue to, his legal representatives ; and in 
case of an assignment of the whole, or of any individed (undivided) 
interest in the invention, the patent may issue to the assignee of the 
whole interest, or jointly to the inventor and the assignee of the 
undivided interest, the assignment being first entered of record, 
and the application being duly made and the specification duly 
sworn to by the inventor. 

3. Joint inventors are entitled to a joint patent; neither can 
claim one separately ; but independent inventors of separate im- 
provements in the same machine cannot obtain a joint patent for 
their separate inventions ; nor does the fact that one man furnished 
the capital and the other makes the invention entitle them to take 
out a joint patent. 

4. Although an applicant may have actually made an invention, 
a patent therefor will not be granted him if the whole or any part 
of what he claims as new has been, before his invention, patented 
or described in any printed publication in this or any foreign 
country, or been invented or discovered in this country, nor if he 
has once abandoned his invention to the public, nor if it has been 
in public use or on sale for more than two years previous to his 
application. 

5. If the inventor, at the time of making his application, be- 



Rule 6 APPENDIX OF RULES OP '70. 800 



lieves himself to be the first inventor or discoverer, a patent shall 
not be refused on account of the invention or discovery, or any 
part thereof, having been before knovirn or used in any foreign 
country; it not appearing that the same or any substantial part 
thereof had before been patented or described in any printed 
publication. 

6. Merely conceiving the idea of an improvement or machine is 
not an "invention" or "discoivery." The invention must have been 
reduced to a practical form, either by the construction of the ma- 
chine itself, or of a model thereof, or by making a drawing of it, 
or by such disclosure of its exact character as that a mechanic can 
and does, from the description given, construct the improvement 
or a model thereof, before it w^ill prevent a subsequent inventor 
from obtaining a patent. 

MODE OF PROCEEDING TO OBTAIN A PATENT 

APPLICATION 

7. All applications for patents shall be completed and prepared 
for examination within two years after the filing of the petition, 
and in default thereof, or upon failure of the applicant to prose- 
cute the same within two years after any action therein, of which 
notice shall have been given to the applicant, they shall be regarded 
as abandoned by the parties thereto, unless it be shown to the 
satisfaction of the Commissioner that such delay was unavoidable. 

8. The application must be made by the actual inventor, if 
alive, even if the patent is to issue or reissue to an assignee ; but 
where the inventor is dead, the application and oath may be made 
by the executor or administrator. 

9. The application must be in writing, in the English language, 
and addressed to the Commissioner of Patents. The petition and 
specification must be separately signed by the inventor. All claims 
and specifiications 'filed in this office (including amendments) must 
be written in a fair, legible hand, without interlineations or erasures, 
except such as are clearly stated in a marginal or foot note written 
on the same sheet of paper ; otherwise the office may require them 
to be printed. All the papers constituting the application must be 
attached together. 

SPECIFICATION 

10. The specification is a written description of the invention 
or discovery, and of the manner and process of making, construct- 
ing, compounding and using the same, in such full, clear, concise, 
and exact terms, avoiding unnecessary prolixity, as to enable any 
person skilled in the art or science to which it appertains, or with 
which it is most nearly connected, to make, construct, compound, 
and use the same. 

11. The applicant must set forth in his speciification the precise 
invention for which he claims a patent; and in all applications for 
mere improvements, the specification must distinguish between what 
is admitted to be old and what is described and claimed to be the 
improvement, so that the office and the public may understand 
exactly for what the patent is granted. 

12. Two or more distinct and separate inventions may not be 



801 DRAWINGS. Eule 20 



claimed in one application ; but where several inventions are neces- 
sarily connected each with the other, they may be so claimed. 

13. If more than one invention is claimed in a single applica- 
tion, and they are found to be of such a nature that a single 
patent may not be issued to cover the whole, the office requires the 
inventor to divide the application into separate applications, or to 
confine the description and claim to whichever invention he may 
elect. 

14. The specification should describe the drawings (where there 
are drawings), and refer by letters and figures to the different 
parts ; and having fully described the art, machine, manufacture, 
composition, or improvement, it should particularly specify and 
point out the part, improvement, or combination which is claimed 
as the invention or discovery. 

15. The specification must be signed by the inventor, or by his 
executor or administrator, and must be attested by two witnesses. 
Full names must be given, and all names, whether of applicant or 
witnesses, must be legibly written. 

16. The applicant must make oath or affirmation that he does 
verily believe himself to be the original and first inventor or dis- 
coverer of the art, machine, manufacture, composition, or improve- 
ments for which he solicits a patent ; that he does not know and 
does not believe that the same was ever before known or used ; 
and shall state of what country he is a citizen. The oath or 
affirmation may be made before an}^ person within the United 
States authorized by law to administer oaths or, when the applicant 
resides in a foreign country, before any minister, charge d'affaires, 
counsul, or commercial agent, holding commission under the govern- 
m.ent of the United States, or before any notary public of the 
foreign country in which the applicant ma^^ be, the oath being 
attested in all cases, in this and other countries, by the proper 
official seal of such notary. 

DRAWINGS 

17. The applicant for a patent is required by law to furnish a 
drawing of his invention, where the nature of the case admits of it. 

18. Such drawing must be on thick, smooth drawing paper, 
sufficiently stiff to support itself in the portfolios of the office. 
It must be neatly and artistically executed, with detached sectional 
views as to clearly show what the invention is in construction and 
operation. Each part must be distinguished by the same number 
or letter whenever it appears in the several drawings. The name 
of the invention should be written at the top, the shortest side being 
considered as such. This drawing must be signed by the applicant 
or his attorney, and attested by two witnesses, and must be sent 
with the specification. Tracings upon cloth pasted on thick paper 
will not be admitted. Thick drawings should never be folded for 
transmission, but should be rolled. 

19. The duplicate drawing to be attached to the patent will be 
furnished by the office without charge, and will be a photo-litho- 
graphic copy of the thick drawing. 

20. The following rules must be observed in the preparation 
of the drawings, in order that they may be photo-lithographed : 

The paper must be thin Bristol board or thick drawing paper, 
with a smooth or calendered surface. The outlines must be 



Eule 21 APPENDIX OF BULES OF '70. 802 



executed in deep black linesi to give distinctness to the print. 
Pale, ashy tints must be dispensed with. 

In shading, lines of black ink should be used, and such lines 
should be distinct and sharp, and not crowded. Brush shadings or 
shadows will not be permitted. 

All colors, except black, must be avoided in the drawing, letter- 
ing, and signatures ; violet and purple inks must not be used. 

No agent's, attorney's, or other stamp must be placed, in whole 
or in part, within the margin. 

The sheet must not be larger than ten inches by 'fifteen, that 
being the size of the patent. If more illustrations are needed, 
several sheets must be used. 

21. Copies of drawings of patents issued after January 1, 1869, 
will be furnished to anyone at the uniform rate of twenty-fiive 
cents per sheet of standard size. 

22. Copies of drawings of patents issued prior to January 1, 
1869, which can be photo-lithographed, will be furnished at twenty- 
five cents per sheet, when ten or more copies are ordered. Single 
tracings of such drawings, or less than ten, will be furnished at 
the cost of making them. One hundred copies or more will be fur- 
nished at ten dollars per hundred. 

23. Applicants are advised to employ competent artists to make 
the drawings, which will be returned if not executed in strict con- 
formity with these rules, or if injured by folding. 

MODEL 

24. An applicant, upon (filing his specification and drawings, may 
submit to the Commissioner the question whether he shall deposit 
a model or specimen of his invention ; otherwise a model will be 
required in every case, except for designs, where the nature of the 
invention admits of such illustration. Such model must clearly 
exhibit every feature of the machine which forms the subject of a 
claim of invention. Models filed as exhibits, in interference and 
other cases, may be returned to the applicant, at the discretion of 
the Commissioner. 

25. The model must be neatly and substantially made, of durable 
material. It should be made as small as possible, but not in any 
case more than one foot in length, width, or height. If made o' 
pine or other soft wood, it should be painted, stained, or varnished. 
Glue must not be used, but the parts should be so connected as to 
resist the action of heat or moisture. 

26. A working model is always desirable, in order to enable 
the office fully and readily to understand the precise operation of 
the machine. The name of the inventor, and of the assignee (if 
assigned), and also the' title of the invention, must be affixed upon 
it in a permanent manner. When the invention is a composition of 
matter, a specimen of each of the ingredients and of the composi- 
tion must accompany the application, and the name of the inventor 
and of the assignee (if there be one) must be permanently affixed 
thereto. 

27. The model, unless otherwise disposed of, will be returned 
to the applicant upon demand, and at the expense of the applicant, 
in all cases when as application has been rejected more than two 
years ; and in any pending case of less than two years' standing, 
upon the filing of a formal abandonment of the application, signed 
by applicant. 



803 EXAMiisTATiON. Rule 33 



COMPLETION OF THE APPLICATION. 

28. No application can be examined, nor can the case be placed 
upon the files for examination, until the fee is paid, the specifica- 
tion, with the petition and oath, filed, and the drawings and model 
or specimen (when required) filed or deposited. It is desirable 
that everything necessary to make the application complete should 
be deposited in the office at the same time. If otherwise, a letter 
should accompan}- each part, stating to what application it belongs. 

THE EXAMINATION 

All cases in the Patent Office are classified and taken up for 
examination in regular order; those in the same class being ex- 
amined and disposed of, as far as practicable, in the order in 
which the respective apphcations are completed. When, however, 
the invention is deemed of peculiar importance to some branch of 
the public service, and when, for that reason, the head of some 
department of the government specially requests immediate action, 
the case will be taken up out of its order. These, with applications 
for reissues, and for letters-patent for inventions for which a 
foreign patent has already been obtained, which cases have pre- 
cedence over original applications, are the only exceptions to the 
rule above stated in relation to the order of examination. 

30. The personal attendance of the applicant at the Patent Office 
is unnecessar}^ The business can be done by correspondence or by 
attornej'. 

31. The applicant has a right to amend, of course, after the 
first rejection; and he may amend as often as the examiner presents 
any new references. After a second rejection, and at any time 
before the issue of the patent, the applicant may draw up special 
amendments and present the same to the Assistant Commissioner, 
who ma}% in his discretion, grant leave to make such special amend- 
ments, and allow a reconsideration by the examiner in charge. But 
such amendments shall first be submitted to the examiner in order 
that he may indorse thereon his recommendation or objections. 

32. All amendments of the model, drawings, or specification, in 
the case of original applications, must conform to at least one of 
them as they were at the time of the filing of the application; and 
all amendments of specifications or claims must be made on sepa- 
rate sheets of paper from the original, and must be filed in the 
manner above directed. Even when the amendment consists in 
.striking out a portion of the specification, or other paper, the same 
course should be observed. No erasure must be made by the appli- 
cant. The papers must remain forever as they were when filed, so 
that a true history of all that has been done in the case may be 
gathered from them. In every case of amendment the exact word 
or words to be stricken out or inserted should be clearly specified, 
and the precise point indicated where any insertion is to be made. 

33. Whenever, on examination, any claim for a patent is re- 
jected, for anj' reason whatever, the applicant will be notified 
thereof, and the reasons for such rejection will be given, together 
with such information and references as may be useful in judging 
of the propriety of renewing his application or of altering his 
specification: and if, after receiving such notice, he shall persist in 
his claim for a patent, with or without altering his specification, 
the case will be reexamined. 



Eule 34 APPENDIX OF RULES OF '70. 804 



34. Upon the rejection of an application for want of novelty, 
the applicant will be furnished with a specific reference (by name, 
date, and class) to the article or articles by which it is anticipated. 
If he desires a copy of the cases so referred to, or of the plates 
or drawings connected with them, they will be forwarded to him, 
if in possession of the office, on payment of the cost of making 
such copies. 

35. When the rejection of an application is founded upon an- 
other case previously rejected but not withdrawn or abandoned, 
the applicant will be furnished with all information in relation to 
the previously-rejected case which is necessary for the proper 
understanding and management of his own. 

36. The speciiication, especially if the claim be amended, must 
be amended and revised, if required by the examiner, for the pur- 
pose of correcting inaccuracies of language or unnecessary pro- 
lixity, and of securing correspondence between the description of 
the invention and the claim. 

37. The office will not return specifications for amendment ; 
and in no case will any person be allowed to take any papers, 
drawings, models, or samples from the office. If applicants have 
not preserved copies of such papers as they wish to amend, the 
office will furnish them on the usual terms. 

DATE OF PATENT 

38. Every patent will bear date as of a day not later than six 
months from the time at which it was passed and allowed, and 
notice thereof was sent to the applicant or his agent, and if the 
final fee shall not be paid within that period, the patent will be 
withheld. No patent will be antedated. 

WITHDRAWN AND REJECTED APPLICATIONS 

39. When an application for a patent has been rejected or 
withdrawn, prior to July 8, 1870, the applicant will have six months 
from that date to renew his application, or to file a new one ; and 
if he omits to do either, his application will he held to have been 
abandoned; upon the hearing of such renewed application, abandon- 
ment will be considered as a question of fact. 

40. The proper course will be, where the application has been 
withdrawn, to file a new application ; and where it has been re- 
jected but not withdrawn, to file a formal renewal, with or without 
amendment, as the status of the application with reference to pre- 
vious action may require. 

41. Upon considering such renewed applications of either class, 
if it be found that applications have been made or unexpired 
patents have been granted in which the device in controversy has 
been described or claimed, an interference will be declared between 
such applications or patents and such renewed application, in order 
that an opportunity may be given for the production of proof of 
abandonment or two years' public use, if either exist. 

APPEALS 

42. Every applicant for a patent or the reissue of a patent, any 
of the claims of which have been twice rejected, and every party 
to an interference, may appeal from the decision of the primary 



805 HEAEiNGS. Rule 49 



examiner, or of the examiner in charge of interferences, in such 
case, to the board of examiners-in-chief, having • once paid a fee 
of ten dollars. For this purpose a petition in writing must be filed, 
signed by the party or his authorized agent or attorney, praying an 
appeal and setting forth briefly and distinctly the reasons upon 
which the appeal is taken. 

43. The examiners-in-chief will consider the case as it was 
when last passed upon by the primary examiner, merely revising his 
decisions so far as they were adverse to the applicant. 

44. There must be two rejections upon the claim as originally 
:filed, or, if amended (in a matter of substance) upon the amended 
claim. Decisions of examiners upon preliminary or intermediate 
questions, or refusals to act, twice repeated, will be reexamined, 
upon application, bj^ the Commissioner in person. 

45. Cases which have been heard and decided by the examiners- 
in-chief will not be reheard by them except upon the order of the 
Commissioner. 

46. All cases which have been acted on by the board of ex- 
aminers-in-chief ma}^ be brought before the Commissioner in person, 
upon a written request to that effect, and upon the payment of the 
fee of twent}- dollars required by law. A case deliberately decided 
by one Commissioner will not be disturbed by his successor. The 
only only remaining remdy will be by appeal, in those cases allowed 
by law, to the supreme court of the District of Columbia, sitting 
in banc. 

47. The mode of appeal from the decision of the office to the 
supreme court of the District of Columbia is by giving written 
notice thereof to the Commissioner; said notice being accompanied 
by the petition addressed to the supreme court of the District of 
Columbia, b}' the reasons of appeal, and by a certified copy of all 
the original papers and evidence in the case. The reasons of 
appeal must be ifiled within thirty daA's after the notice of the deci- 
sion appealed from. 

48. Printed forms of notice of appeal, of the reasons of ap- 
peal, and of the petition will be forwarded on request. The 
original files in the case cannot be taken from the office to the 
court, but certified copies of the record and references, to be used 
as evidence, will be furnished at the usual rates. 

HEARINGS 

49. All cases pending before the Commissioner will stand for 
argument at one o'clock on the day of hearing. If either party 
in a contested case, or the appellant in an ex parte case, appear 
at that time, he will be heard : but in contested cases no motions 
will be heard in the absence of the other party, except upon default 
after due notice; nor will a case be taken up for oral argument 
after the day of hearing, except by consent of both parties. If the 
engagements of the tribunal before whom the case is pending are 
such as to prevent it from being taken up on the day of bearing, 
a new assignment will be made, or the case will be continued from 
day to day until heard. Unless otherwise ordered before the 
hearing begins, oral arguments will be limited to one hour for 
each counsel. 



Eule 50 APPENDIX OF EXILES OF '70. 806 



MOTIONS 

so. Reasonable notice of all motions, and copies of the motion 
papers and affidavits, must be served upon the opposite party or his 
attorney. 

INTERFERENCES 

51. An "interference" is an interlocutory proceeding for the 
purpose of determining which of two or more persons, each or 
either of whom claims to be the first inventor of a given device 
or combination, really made the invention first. 

An interference will be declared in the following cases : 

First. When the parties have pending applications before the 
office at the same time, both or all the parties claiming to be the 
inventor of the same thing. 

Second. When an applicant, having been rejected upon the 
prior unexpired patent or the prior application of another, claims 
to have made the invention before the prior applicant or patentee. 

Third. When an invention is claimed in a renewed application 
which is shown or claimed in an application filed or unexpired 
patent granted prior to the ifiling of such renewed application. 

Fourth. When an applicant for a reissue embraces in his 
amended specification any new or additional description of his in- 
vention, or enlarges his claim, or makes a new one, and thereby 
includes therein anything which has been claimed in any patent 
granted subsequent to the date of his original application, as the 
intention of another person, an interference will be declared be- 
tween the application and any such unexpired patent, or pending 
application. If the reissue application claims only what was 
granted in the original patent, it may be put into interference with 
any pending application in which the same thing is shown, pro- 
vided the later applicant claims to be the prior inventor and is 
not barred a patent by public use or abandonment. 

Fifth. When an application is found to conflict with a caveat, 
the caveator is allowed a period of three months within which to 
present an application, when an interference may be declared. 

Sixth. The office reserves to itself the right, when two applica- 
tions are pending at the same time, in one of which a device 
may be described which is claimed in the other, to declare an in- 
terference to determine with whom is priority of invention, without 
reference to the order in which such applications may have been 
filed. 

52. The fact that one of the parties has already obtained a 
patent will not prevent an interference ; for, although the Com- 
missioner has no power to cancel -a patent already issued, he may, 
if he finds that another person was the prior inventor, give him 
also a patent, and thus place them on an equal footing before the 
courts and the public. 

53. Upon the declaration of an interference each party will be 
required, before any time is set for the taking of testimony, to 
file a statement under oath giving the date and a detailed historj'- 
of the invention; showing the successive experiments, steps of 
development, extent and character of use, and forms of- embodiment. 
Such statement shall not be open to inspection by the other party, 
until both are filed, or until the time for ifiling both has expired. 
In default of such filing by either party, or if the statement of 



807 INTERFERENCES, Rule 60 

either fails to overcome the prima facie case made by the respective 
dates of application, or if it shows that the invention has been 
abandoned or that it has been in public use for more than two 
years prior to the application of affiant, the other party shall be 
entitled to an adjudication by default upon the case as it stands 
upon the record. 

54. Where no testimony is taken by the applicant upon whom 
rests the burden of proof, or where testimony has been taken by 
such applicant, but not by the other party, during the time assigned 
to the latter, the case will be considered closed, and may, at the 
expiration of the time assigned to such parties respectively, be set 
down for hearing, at any time, not less than ten days thereafter. 

55. In cases of interference, parties have the same remedies by 
appeal as other applicants, to the examiners-in-chief and to the 
Commissioner, but no appeal lies, in such cases, from the decision 
of the Commissioner. Appeals in interference cases should be 
accompanied with a brief statement of the reasons thereof. 

56. When an interference is declared, notice will be given to 
both parties, or to their attorneys. When one of the parties has 
filed a caveat or already received a patent, duplicate notices will be 
sent to the patentee or caveator and to his attorney of record. 
Where one of the parties resides abroad and has no known agent 
in the United States, in addition to the notice sent by mail, notice 
may be given by publication in a newspaper of general circulation 
in the city of Washington once in a week for three successive 
weeks. 

57. In cases of interference the party who first filled so much 
of his application for a patent as illustrates his invention will be 
deemed the ifirst inventor in the absence of all proof to the con- 
trary. A time will be assigned in which the other party shall 
complete his direct testimony ; and a further time in which the 
adverse party shall complete the testimony on his side; and a still 
further time in which both parties may take rebutting testimony, 
but shall take no other. If there are more than two parties, the 
times for taking testimony shall be so arranged, if practicable, that 
each shall have a like opportunity in his turn, each being held to 
go forward and prove his case against those who filed their ap- 

, plications before him. 

58. If either party wishes the time for taking his testimony, 
or for the hearing, postponed, he must make application for such 
postponement, and must show sufficient reason for it by affidavit 
filed before the time previously appointed has elapsed, if practicable: 
and must also furnish his opponent with copies of his affidavits and 
with reasonable notice of the time of hearing his application. 

59. Cases of interference will, when the issue is made up and 
the testimony taken, be tried before the examiner in charge of 
interferences. If an interference has been properly declared, it 
will not be dissolved without judgment of priority, founded upon 
the testimony or the written concession of one of the parties, 
unless the invention is found not to be patentable, or to have been 
abandoned, or that it has been in public use for more than two 
years prior to the application of either party, or that no inter- 
ference in fact exists. 

60. No amendments to the specification will be received during 
the pendency of an interference, except as provided in section 61. 
A second interference will not be declared upon a new application 
filed by either party during the pendency of an interference, or 



Rule 61 APPENDIX OF EULES OF '70. 808 



after judgment, nor will a rehearing be granted, unless it be shown 
to the satisfaction of the Commissioner (in person) that the party 
desiring a new interference or rehearing has new and material 
testimony which he could not have procured in time for the hear- 
ing; or, unless other sufficient reasons be shown, satisfactory to the 
Commissioner. 

61. When an application is adjudged to interfere with a part 
only of another pending application, the interfering parties will be 
permitted to see or obtain copies of so much only of the specifica- 
tions as refers to the interfering claims. And either party may, 
if he so elect, withdraw from his application the claims adjudged 
not to interfere and file a new application therefor : Provided, 
That the claims so withdrawn cover inventions which do not 
involve the devices in interference : And provided also, That the 
devices in interference are eliminated from the new application. 
In such cases the latter will be examined without reference to the 
interference from which it was withdrawn. 

REISSUES 

62. A reissue is granted to the original patentee, his legal 
representatives, or the assignees of the entire interest, when by 
reason of a defective or insufficient specification the original 
patent is inoperative or invalid, provided the error has arisen from 
inadvertence, accident, or mistake, and without any fraudulent or 
deceptive intention ; but although the patent has been assigned, the 
application must be made, and the specification sworn to by the 
inventor. 

63. The petition for a reissue must show that all parties owning 
any undivided interest in the patent concur in the surrender. A 
statement, under oath, of the title of the party proposing to 
surrender must be filed with the application. 

64. The general rule is, that whatever is really embraced in the 
orignial invention, and so described or shown that it might have 
been embraced in the original patent, may be the subject of a re- 
issue ; but no new matter shall be introduced into the specification, 
nor in case of a machine patent shall the model or drawings be 
amended except each by the other; but, when there is neither model 
nor drawing, amendments may be made upon proof satisfactory to 
the Commissioner that such new matter or amendment was a part 
of the original invention, and was omitted from the specification 
by inadvertence, accident, or mistake, as aforesaid. 

65. Reissued patents expire at the end of the term for which 
the original patent was granted. For this reason applications for 
reissue will be acted upon as soon as filed. 

66. A patentee, in reissuing, may at his option have a separate 
patent for each distinct and separate part of the invention com- 
prehended in his original patent, by paying the required fee in each 
case, and complying with the other requirements of the law, as in 
original applications. Each division of a reissue constitutes the 
subject of a separate specification descriptive of the part or parts 
of the invention claimed in such division : and the drawing may 
represent only such part or parts. All the divisions of a reissue 
will issue simultaneously. If there be controversy as to one, the 
other will be withheld from issue until the controversy is ended. 

67. In all cases of applications for reissues, the original claim, 
if reproduced in the amended specification, is subject to re-exam- 



809 EXTENSIONS. Rule 73 



ination, and may be revised and restricted in the same manner as 
in original applications; but if any reissue be refused, the original 
patent will, upon request, be returned to the applicant. 

DISCLAIMERS 

68. Whenever, by inadvertence, accident, or mistake, the claim 
of invention in any patent is too broad, embracing more than 
that of which the patentee was the original or first inventor, some 
material or substantial part of the thing patented being truly and 
justly his own, the patentee, his heirs or assigns, whether of a 
whole or of a sectional interest, may make disclaimer of such 
parts of the thing patented as the disclaimant shall not choose to 
claim or to hold by virtue of the patent or assignment, stating 
therein the extent of his interest in such patent ; which disclaimer 
shall be in writing, attested by one or more witnesses, and recorded 
in the Patent Office. 

EXTENSIONS 

69. Power is vested in the Commissioner to extend any patent 
granted prior to March 2, 1861, for seven years from the expiration 
of the original term ; but no patent granted since March 2, 1861, 
can be extended. When a patent has been reissued in two or more 
divisions, separate applications must be made for the extension of 
each division. 

70. The apphcant for an extension must 'file his petition and 
pay in the requisite fee not more than six months nor less than 
ninety days prior to the expiration of his patent. There is no 
power in the . Commissioner to renew a patent after it has once 
expired. 

71. Any person who intends to oppose an application for ex- 
tension may, at any time after such application has been made, 
give notice of such intention to the applicant. After this he will 
be regarded as a party in the case, and will be entitled to notice 
of the time and place of taking testimony; to a hst of names and 
residences of the witnesses whose testimony may have been taken 
previous to his service of notice of opposition; to a copy of the 
application : and to any other papers on file, upon paying the 
cost of copying. 

12. The applicant for an extension must furnish to the office 
a statement in writing, under oath, of the ascertained value of 
the invention, and of his receipts and expenditures on account 
thereof, both in this and foreign countries. This statement must 
must be made particular and in detail, unless sufficient reason is 
set forth why such a statement cannot be furnished. It must be 
filed within thirty days after filing the petition. 

12). The questions which arise on each application for an ex- 
tension are : 

First. Was the invention new and useful when patented? 

Second. Is it valuable and important to the public, and to what 
extent? 

Third. Has the inventor been reasonably remunerated for the 
time, ingenuity, and expense bestowed upon it, and the introduction 
of it into use? If not, has his failure to be remunerated arisen 
from neglect or fault on his part? 



Rule 74 APPENDIX OF KTJLES OF '70. 810 



Fourth. What will be the effect of the proposed extension upon 
the public interests ? 

No proof will be required from the applicant upon the first 
question unless the invention is assailed upon those points by 
opponents. 

To enable the Commissioner to come to a correct conclusion 
in regard to the second point of inquiry, the applicant should, if 
possible, procure the testimony of persons disinterested in the in- 
vention, which testimony should be taken under oath. This testi- 
mony should have relation to nothing but what is actually covered 
by the claims of the patent. 

In regard to the third point of inquiry, in addition to his own 
oath, showing his receipts and expenditures on account of the in- 
vention, the applicant should show, by testimony under oath, that 
he has taken all reasonable measures to introduce his invention 
into general use ; and that, without neglect or fault on his part, 
he has failed to obtain from the use and sale of the invention a 
reasonable remuneration for the time, ingenuity, and expense be- 
stowed on the same, and the introduction of it into use. 

74. In case of opposition to the extension of a patent by any 
person, both parties may take testimony, each giving reasonable 
notice to the other of the time and place of taking said testimony, 
which shall be taken according to the rules prescribed bj^ the Com- 
missioner in cases of interference. 

75. Any person opposing an extension must file his reasons of 
opposition in the Patent Office at least twenty days before the day 
of hearing. 

76. In contested cases no testimony will be received, unless by 
consent, which has been taken within thirty days next after the 
filing of the petition for the extension. 

n. Service of notice to take testimony may be made upon 
applicant, upon the opponent, upon the attorney of record of either, 
or, if there be no attorney of record, upon any attorney or agent 
who takes part in the service of notice, or the examination of the 
witnesses of either part}'. Where notice to take testimony has 
already been given to an opponent, and a new opponent subsequently 
gives notice of his intention to oppose, the examination need not 
be postponed, but notice thereof may be given to such subsequent 
opponent by mail or by telegraph. This rule, how^ever, does not 
appliy to ex parte examinations, or those 'of which no notice has 
been given when notice of opposition is served. 

78. In the notice of the application for an extension a day 
will be fixed for the closing of testimony ; a day ten days later for 
the reception of arguments, and for the filing of the examiner's 
report ; and a day five days after this for a hearing ; but no case 
will be set for a hearing more than three weeks prior to the ex- 
piration of the patent. Applications for a postponement of the 
hearing must be made and supported according to the same rules 
as are to be observed in cases of interference. But they will not 
be granted in such a manner as to cause a risk of preventing a 
decision in season. 

DESIGNS 

79. A patent for a design may be granted ta any person, 
whether citizen or alien, who, by his own industry, genius, efforts, 
and expense, has invented or produced any new and original design 



811 . TBADE-MAEKS. Rule 84 



for a manufacture, bust, statue, alto-relievo, or bas-relief ; any 
new and original design for the printing of woolen, silk, cotton, oi" 
other fabrics ; any new and original impression, ornament, pattern, 
print, or picture, to be printed, painted, cast, or otherwise placed 
on or worked into any article of manufacture ; or any new, useful, 
and original shape or configuration of any article of manufacture, 
the same not having been known or used by others before his in- 
vention or production thereof, or patented or described in any 
printed publication, upon paj'ment of the. duty required by law, and 
other due proceedings had the same as in cases of inventions or 
discoveries. 

80. Patents for designs are granted for the term of three and 
one-half years, or for the term of seven years, or for the term of 
fourteen years, as the said applicant may elect in his application. 
If granted prior to March 2, 1861, and unexpired, they may be 
extended for seven years, in the same manner as patents for in- 
vention. 

81. The petition, oath, specification, and other proceedings in 
the case of applications for letter-patent for a design are the same 
as for other patents. 

82. When a work of design can be sufficiently represented by 
a drawing, a model will not be required. 

83. Photographs are received for the illustration of works of 
design only. One must be pasted upon thick drawing-paper, but 
in every_case where this mode of illustration is employed by an 
applicant he will be required to deposit in this office the glass or 
other "negative" from which the photograph is printed, so that 
exact official copies may be made therefrom when desirable. 

TRADE-MARKS 

84. Any person or ifirm domiciled in the United States, and 
any corporation created bj^ the authority of the United States, or 
anj' State or Territory thereof, and any person, firm or corporation 
resident of or located in an foreign country which, by treaty or 
convention, affords similar privileges to citizens of the United 
States, and who are entitled to the exclusive use of any lawful 
trade-mark, or who intend to adopt and use any trade-mark for 
exclusive use within the United States, may obtain protection for 
such lawful trade-mark by complying with the following require- 
ments, to wit.: 

First. By causing to be recorded in the Patent Office the names 
of the parties, and their residences and place of business, who 
desire the protection of the trade-mark. 

Second. The class of merchandise and the particular description 
of goods comprised in such class, by which the trade-mark has 
been or is intended to be appropriated. 

Third. A description of the trade-mark itself, with fac-similes 
thereof and the mode in which it has been or is intended to be 
applied and used. 

Fourth. The length of time, if an}', during which the trade- 
mark has been used. 

Fifth. The paj'ment of a fee of twenty-five dollars, in the 
same manner and for the same purpose as the fee required for 
patents. 

Sixth. The compliance with such regulations as may be pre- 
scribed by the Commissioner of Patents. 



Rule 85 APPENDIX OF RULES OF '70.. 812 



Seventh. The filing of a declaration, under the oath of the 
person, or of some memher of the firm or officer of the corpora- 
tion, to the effect that the party claiming protection for the trade- 
mark has a right to the use of the same, and that no other person, 
firm or corporation has a right to such use, either in the identical 
form or having such near resemblance thereto as might be calcu- 
lated to deceive, and that the description and fac-similes presented 
for record are true copies of the trade-mark sought to be protected. 

85. Such trade-mark shall remain in force for thirty years, and 
may be renewed for thirty years more, except in cases where such 
trade-mark is claimed for, and applied to, articles not manufactured 
in this country, and in which it receives protection under the laws 
of any foreign country for a shorter period, in which case it shall 
cease to have force in this country, at the same time that it be- 
comes of no effect elsewhere. 

86. No proposed trade-mark will be received or recorded which 
is not and cannot become a lawful tradfe-mark, or which is merely 
the name of a person, ifirm, or corporation only, unaccompanied 
by a mark sufficient to distinguish it from the name when used by 
other persons, or which is identical with a trade-mark appropriate 
to the same class of merchandise and belonging to a different 
owner, and already registered or received for registration, or which 
so nearly resembles such last-mentioned trade-mark as to be likely 
to deceive the public ; but any lawful trade-mark already lawfully 
in use may be recorded. 

87. Five duplicate copies of the proposed trade-mark, in addi- 
tion to the one accompanying the statement and oath of applicant, 
must be deposited with each application. Certified copies will be 
furnished at the usual rates. 

88. The right to the use of any trade-mark is assignable by 
any instrument of writing, and such assignment must be recorded in 
the Patent Office within sixty days after its execution. The fees 
will be the same as are prescribed for recording assignments of 
patents. 

FOREIGN PATENTS 

89. The taking out of a patent in a foreign country does not 
prejudice a patent previously obtained here, nor does it prevent 
obtaining a patent here subsequently, unless the invention shall 
have been introduced into public use in the United States for more 
than two years prior to the appHcation ; and proz'ided, that the 
patent shall expire at the same time with the foreign patent, or, if 
there be more than one, at the same time with the one having the 
shortest term ; but in no case shall it be in force more than 
seventeen years. 

90. When application is made for a patent for an invention 
which has been already patented abroad, the inventor will be re- 
quired to make oath that, according to the best of his knowledge 
and belief, the same has not been in public use in the United States 
for more than two years prior to the application in this country. 

91. An applicant whose invention has been patented abroad 
should state the fact that a foreign patent has actually been ob- 
tained, giving its date, and if there be more than one, of the one 
having the shortest term. 



813 ASSIGNMENTS. . Rule 101 



CAVEATS 

92. Any citizen bf the United States, or alien who has resided 
for one year last past in the United States, and has made oath of 
his intention to become a citizen thereof, can file a caveat in the 
secret archives of the Patent Office on the payment of a fee of 
ten dollars therefor. And if, at any time within one year there- 
after, another person applies for a patent for the same invention, 
the caveator will be entitled to notice to file his application, and 
to go into interference with the applicant for the purpose of proving 
priority of invention and obtaining the patent if he succeed. He 
must file his application within three months from the day on 
which the notice to him is deposited in the post office at Washington, 
adding the regular time for the transmission of the same to him ; 
and the day when the time for filing expires shall be mentioned 
in the notice or indorsed thereon. 

93. The caveator will not be entitled to notice of any applica- 
tion pending at the time of filing his caveat, nor of any application 
'filed after the expiration of one year from the date of filing the 
caveat ; but he may renew his caveat at the end of one year by 
paying a second caveat fee of ten dollars, which will continue it 
in force for one year longer, and so on from year to year as the 
caveator may desire. 

94. No caveat can be filed in the secret archives of the office 
unless accompanied by an oath of the caveator that he is a citizen 
of the United States, or, if he is an alien, that he has resided for 
one year last past within the United States, and has made oath of 
his intention to become a citizen thereof ; nor unless the applicant 
also states, under oath, that he believes himself the original in- 
ventor of the art, machine, or improvement set f jrth in his caveat. 

95. A caveat need not contain as particular a description of 
the invention as is requisite in a specification ; but still the descrip- 
tion should be sufficiently precise to enable the office to judge 
whether there is a probabfe interference when a subsequent appli- 
cation is filed. 

96. Caveat papers cannot be withdrawn from the office nor 
undergo alteration after they have once been ifiled; but the caveator, 
or any person properly authorized by him, can at any time obtain 
copies of the caveat papers at the usual rates. 

97. When practicable, the caveat must be accompanied by 
drawings or sketches. 

ASSIGNMENTS 

98. A patent may be assigned, either as to the whole interest 
or any undivided part thereof, by any instrument of writing. No 
particular form of words is necessary to constitute a valid assign- 
ment, nor need the instrument be sealed, witnessed, or acknowledged. 

99. A patent will, upon request, issue directly to the assignee 
or assignees of the entire interest in any invention, or to the 
inventor and the assignee jointly, when an undivided part only of 
the entire interest has been conveyed. 

100. In every case where a patent issues or reissues to an 
assignee the assignment must be recorded at the Patent Office at 
least 'five days before the issue of the patent, and the specification 
must be sworn to by the inventor. 

101. When the patent is to issue in the name of the assignee 
the entire correspondence should be in his name. 



Eule 102 APPENDIX OF EULES OF '70. 814 



102. The patentee may grant and convey an exclusive right 
under his patent to the whole or any specified portion of the 
United States, by an instrument in writing. 

103. Every assignment or grant of an exclusive territorial right 
must be recorded in the patent Office within three months from 
the execution thereof; otherwise it will be void as against any 
subsequent purchaser or mortgagee for a valuable consideration 
without notice; but, if recorded after that time, it will protect the 
assignee or grantee against any such subsequent purchaser, whose 
assignment or grant is not then on record. 

104. The patentee may convey separate rights under his patent 
to make or to use or to sell his invention, or he may convey 
territorial or shop rights which are not exclusive. Such convey- 
ances are mere licenses, and need not be recorded. 

105. The receipt of assignments is not generally acknowledged 
by the otfice. They will be recorded in their turn within a few 
days after their reception, and then transmitted to the persons en- 
titled to them. A firve cent revenue stamp is required for each 
sheet or piece of paper on which an assignment, grant, or license 
may be written. 

OFFICE FEES AND HOW PAYABLE 

106. Nearly all the fees payable to the Patent Office are posi- 
tively required by law to be paid in advance, that is, upon making 
application for any action by the office for which a fee is payable. 
P'or the sake of uniformity and convenience, the remaining fees 
will be required to be paid in the same manner. 

107. The following is the tariff of fees established by law : 

On ifiling every application for a design, for three years and 

six months. . ._•••;•■ $10.00 

On filing every application for a design, for seven years 15.00 

On filing application for a design, for fourteen years 30.00 

On 'filing every caveat 10 . 00 

On filing every application for a patent 15.00 

On issuing each original patent 20 . 00 

On filing a disclaimer 10 . 00 

On Ifiling every application for a reissue 30.00 

On filing every application for division of a reissue 30.00 

On filing every application for an extension 50.00 

On the grant of every extension 50.00 

On filing the first appeal from a primary examiner to ex- 
aminers-in-chief 10 . 00 

On filing an appeal to the Commissioner from examiners-in- 
chief 20.00 

On depositing a trade-mark for registration 25.00 

For every copy of a patent or other instrument, for every 100 

words _ 10.00 

For every certified copy of drawing, the cost of having them 

made. 
For copies of papers not certified, the cost of having them 
made. 

For recording every assignment of 300 words or under 1.00 

For recording everv assignment, if over 300 and not over 

1,000 words.' 2.00 

For recording every assignment, if over 1,000 words 3.00 



815 TAKING TESTIMONY. Rule 113 



108. The final fee on issuing a patent must be paid within six 
months after the time at which the patent was allowed and notice 
thereof sent to the applicant or his agent. And if the final fee 
for such patent be not paid within that time the patent will be 
forfeited, and the invention therein described become public property, 
as against the applicant therefor, unless he shall make a new 
application therefor within two years from date of the original 
allowance. 

109. The money for the payment of fees may be paid to the 
Commissioner, or to the Treasurer, or any of the assistant treasurers, 
of the United States, or to any of the designated depositaries, 
national banks, or receivers of public money, designated by the 
Secretary of the Treasury for that purpose, who shall give the 
depositor a receipt or certificate of deposit therefor, which shall 
be transmitted to this office. When this cannot be done without 
much inconvenience, the money may be remitted by mail, and in 
every case the letter should state the exact amount inclosed. 
Letters containing money may be registered. Post office money- 
orders now afford a safe and convenient mode of transmitting 
fees. All such orders should be made payable to the Commissioner 
of Patents. 

110. All money sent by mail, either to or from the Patent 
Office, will be at the risk of the owner. In no case should money 
be sent inclosed with models. All payments to or by the office 
must be paid in specie, treasury notes, national bank notes, certifi^ 
cates of deposit, or post office money-orders. 

REPAYMENT OF MONEY 

111. Money paid by actual mistake will be refunded; but a 
mere change of purpose after the payment of money will not 
entitle a party lo demand such return. 

STAMPS 

112. Revenue stamps must be attached as follows: 

First A stamp of the value of ififty cents is required upon 
each power of attorney authorizing an attorney or agent to trans- 
act business with this office relative to an application for a patent, _ 
reissue, or extension. 

Second. No assignment directing a patent to issue to an 
assignee will be recognized by this office, nor will any assignment 
be recorded, unless stamps shall be affixed of the value of five 
cents for every sheet or piece of paper upon which the same shall 
be written. 

Third. The person using or affixing the stamp must cancel the 
same by writing thereupon the initials of his name and the date. 

TAKING AND TRANSMITTING TESTIMONY 

113. The law requires the clerks of the various courts of the 
United States to issue subpoenas to compel the attendance of 
witnesses whose depositions are desired to be read in evidence in 
any contested cases in the Patent Office. 

In interference, extension, and other contested cases, the fol- 
lowing rules have been established for taking and transmitting 
evidence : 



Rule 114 APPENDIX OF EULES OF '70, 816 



First. That, before the deposition of a witness or witnesses 
be taken by either party, due notice shall be given to the opposite 
party, as hereinafter provided, of the time and place when and 
where such deposition or depositions will be taken, with the names 
and residences of the witness or witnesses then and there to be 
examined, so that the opposite party, either in person or by 
attorney, shall have full opportunity to cross-examine the witness 
or witnesses : Proznded, That if the opposite party or his counsel 
be actually present at the taking of testimony, witnesses not named 
in the notice may be examined, but not otherwise. And such 
notice shall, zuith proof of service of the same, be attached to the 
deposition or depositions, whether the party cross-examine or not; 
and such notice shall be given in sufficient time for the appear- 
ance of the opposite party. 

Second. That, whenever a party relies upon a caveat to estab- 
lish the date of his invention, a certified copy thereof must be 
■filed in evidence, with due notice to the opposite party, as no 
notice can be taken by the office of a caveat, filed in its secret 
archives. 

Third. That all evidence, etc., shall be sealed up, entitled upon 
the envelope with the name of the case in which it is taken, and 
addressed to the Commissioner of Patents by the person before 
whom it shall be taken, and so certilfied thereon, and forwarded 
immediately upon the close of the examination to the Patent Office. 

Fourth. In cases of extension, where no opposition is made, 
ex parte testimony will be received from the applicant; and such 
testimony as may have been taken by the applicant prior to notice 
of opposition shall be received, unless taken within thirty days 
after filing the petition for the extension : Provided, That im- 
mediately upon receiving notice of opposition the applicant shall 
give notice to the opposing party or parties of the names and 
residences of the witnesses whose testimony has thus been taken. 

Fifth. That no evidence touching the matter at issue will be 
considered upon the daj' of hearing which shall not have been 
taken and filed in comphance with these rules : Provided, Notice 
of the objection has been given, as hereinafter prescribed (see 
Rule 118) : Provided also, That if either party shall be unable, for 
good and sufficient reasons, to procure the testimony of a witness 
or witnesses within the stipulated time, it shall be the duty of said 
party to give notice of the same to the Commissioner of Patents, 
accompanied by statements, under oath, of the cause of such in- 
ability, and of the names of such witnesses and of the facts ex- 
pected to be proved by them, and of the steps which have been 
taken to procure said testimony, and of the time or times when 
eflforts have been made to procure it ; which last-mentioned notice 
to the Commissioner shall be received by him previous to the day 
of hearing aforesaid. 

114. The notice for taking testimon}' must be served by de- 
livering a copy to the adverse party or his agent or attorney of 
record or counsel, as provided in Rule 77, or by leaving a copy 
at the party's usual place of residence with some mem'^er of the 
family who has arrived at the years of discretion. The notice 
must be annexed to the deposition, with a certificate duly sworn 
to, stating the manner and time in which the service was made. 

115. The testimony must (if either party desires it) be taken 
in answer to interrogatories, having the questions and answers 
committed in writing in their regular order by the magistrate, or. 



817 coERESPONDENCE. Rule 125 



under his direction, by some person not interested in the issue, nor 
an agent or attorney of one who is. The deposition, when com- 
plete, must be signed by the witness. 

116. The magistrate must append to the deposition his certifi- 
cate, stating the time and place at which it was taken, the names 
of the witnesses, the administration of the oath, at whose request 
the testimony was taken, the occasion upon which it is intended to 
be used, the names of the adverse party (if any), and whether 
they were present. 

117. No notice will be taken at the hearing of any merely 
formal or technical objection, unless it shall appear to have wrought 
a substantial injury to the party raising the objection; and even 
then as soon as that party becomes aware of the objection, he 
must immediately give notice thereof to this office, and also to the 
opposite party, informing him at the same time that, unless cor- 
rected, he shall urge his objection at the hearing. 

118. In contested cases, whether of interference or of extension, 
parties may have access to the testimony on file prior to the hearing, 
in presence of the officer in charge ; and copies ma}' be obtained by 
them at the usual rates. 

RULES OF CORRESPONDENCE 

119. All correspondence must be in the names of the "Com- 
missioner of Patents," and all -letters and other communications 
intended for the office must be addressed to him. If addressed 
to the Acting or Assistant Commissioner, chief clerk, examiners, 
or any of the other officers, they will not be noticed, unless it 
should be seen that the mistake was owing to inadvertence. A 
separate letter should in every case be ivritten in relation to each 
distinct subject of inquiry or application, the subject of the in- 
vention and the date of filing being always carefully noted. 

120. When an agent has filed his power of attorney, duly 
executed, the correspondence will, in ordinary cases, be held with 
him only. A double correspondence with him and his principal, if 
generally allowed, would largely increase the labor of the office. 
For the same reason the assignee of an entire interest in an in- 
vention is entitled to hold correspondence with the office to the 
exclusion of the inventor. If the principal becomes dissatisfied, he 
must revoke his power of attorney and notify the office, which will 
then communicate with him.- 

121. All communications to and from the Commissioner upon 
official business are carried in the mail free of postage. 

122. After a second rejection none of the papers can be in- 
spected, save in the presence of a sworn officer; nor will any of 
the papers be returned to the applicant or agent. 

123. Whenever it shall be found that two or more parties whose 
interests are in conflict are represented by the same attorney, the 
examiner in charge will notify each of said principal parties of 
this fact, and also the attorney. 

124. Aside from the caveats, which are required by law to be 
kept secret, all pending applications, are, as far as practicable, pre- 
served in ^ like secrecy. No information will therefore be given 
those inquiring whether any particular case is before the office, or 
whether any particular person has applied for a patent. 

125. But information is given in relation to any case after a 
patent has issued, or after a patent has been refused, and the 



Rule 126 APPENDIX OF RULES OF '70. 818, 



further prosecution of the application is abandoned or barred by 
lapse of time. 

126. The models, in such cases, are so placed as to be subject 
to general inspection. The specifications and drawings in any- 
particular case can be seen by any one having particular occasion 
to examine them, and copies thereof, as well as of patents granted, 
will be furnished at the cost of making them. Copies will be made 
on parchment, at the request of the applicant, on his paying the 
additional cost. 

127. Even after a case is rejected the appHcation is regarded as 
pending, unless the applicant allows the matter to rest for two 
years without taking any further steps therein, in which case it 
will be regarded as abandoned, and will no longer be protected by 
any rule of secrecy. The specification, drawings, and model will 
then be subject to inspection in the same manner as those of 
patented or withdrawn applications. 

128. Information in relation to pending cases is given so far 
as it becomes necessary in conducting the business of the office, 
but no further. Thus, when an interference is declared between two 
pending applications, each of the contestants is entitled to a 
knowledge of so much of his antagonist's case as to enable him to 
conduct his own understandingly. 

129. The office cannot respond to inquiries as to the novelty of 
an alleged invention in advance of an application for a patent, nor 
upon inquiries founded upon brief and imperfect descriptions, pro- 
pounded with a view of ascertaining whether such alleged im- 
provements have been patented, and, if so, to whom ; nor can it 
act as an expounder of the patent law, nor as counsellor for in- 
dividuals, except as to questions arising within the office. A copy 
of the rules, with this section marked, sent to the individual mak- 
ing an inquiry of the character referred to, is intended as a 
respectful answer by the office. 

130. All business with the office should be transacted in writing. 
Unless by the consent of all parties, the action of the office will be 
predicated exclusively on the written record. No attention will be 
paid to any alleged verbal promise or understanding in relation to 
which there is any disagreement or doubt. 

ATTORNEYS 

131. Any person of intelligence and good moral character may 
appear as the attorney in fact or agent of an applicant, upon filing 
proper power of attorney. As the value of patents deoends largely 
upon the careful preparation of the specification and claims, the 
assistance of competent counsel will, in most cases, be of ad- 
vantage to the applicant, but the value of their services will be 
proportioned to their skill and honesty. So many persons have 
entered this profession of late years without experience, that too 
much cannot be exercised in the selection of a competent man. 
The office cannot assume responsibility for the acts of attorneys, 
nor can it assist applicants in making a selection. It will, however, 
be a safe rule to distrust those who boast of the possession of 
special and peculiar facilities in the office for procuring patents in 
a shorter time or with more extended claims than others. 

132. Powers of attorney must contain a clause of substitution, 
to authorize the attorney to substitute for, or associate with, him- 



819 LiBKAEY. Rule 136 



self a second agent; but such powers will not authorize the second 
agent to appoint a third. 

133. A power of attorney must be filed in every case, both by 
original and associate attorneys, before such attorney will be al- 
lowed to inspect papers or take action of any kind; but a revenue 
stamp need be affixed to original powers only. 

134. Attorneys will be expected to conduct their business with 
the office with decorum and courtesy. For gross misconduct, the 
Commissioner may refuse to recognize any person as a patent agent, 
either generally or in any particular case : and for lesser offenses 
attorneys maj' be refused the privilege of oral interviews, and be 
required to transact all business with the office in writing. 

135. As members of Congress cannot examine cases, or act 
without regular powers of attorney, as cases cannot be taken up 
out of their regular order upon their request, and as the delay 
in transmitting papers to and from the Capitol involves a loss 
of time, which would be avoided by communicating directly with 
the office, applicants are recommended not to add to the sufficiently 
arduous duties of their representatives by ordering copies or at- 
tempting to transact business with the office through them. 

LIBRARY 

136. Xo persons are allowed to take books from the library 
except those employed in the office. 

All books taken from the library must be entered in a register 
kept for the especial purpose, and returned on the call of the 
librarian. 

Any book lost or defaced must be replaced by another. 
Patentees and others doing business with the office can examine 
the books only in the library hall. 

All translations will be made at the usual rates by the office. 
No persons will be allowed to make copies or tracings from 
works in the library. Such copies will be furnished at the usual 
rates. 

SAMUEL S. FISHER. 

Commissioner. 
APPROVED : 

J. D. COX, 
Secretary of the Interior. 



Eule 1 APPENDIX or rules of '79. 820 



APPENDIX D 

RULES OF PRACTICE 

IN THE 

UNITED STATES PATENT OFFICE 

REVISED- DECEMBER 1, 1879. 



The following regulations, designed to be in strict accordance 
with the revised statutes relating to the grant of patents for in- 
ventions, are published for gratuitous distribution. Marginal refer- 
ences to corresponding provisions of the revised statutes, and of 
the rules of 1878, are given for the convenience of the public and 
of the office. 

The observance of the appended forms, in all cases to which 
they may be appHcable, is recommended to inventors and attorneys. 

Printed copies of the revised statutes relating to the grant of 
patents may be obtained on application to the Commissioner. 

CORRESPONDENCE 

1. All business with the office should be transacted in writing. 
Unless by the consent of all parties, tlT,e action of the office will 
be based exclusively on the written record. No attention will be 
paid to any alleged oral promise, stipulation, or understanding, in 
relation to which there is disagreement or doubt. 

2. All office letters must be sent in the name of the "Com- 
missioner of Patents." All letters and other communications in- 
tended for the office must be addressed to him ; if addressed to 
any of the other officers they will ordinarily be returned. 

3. Express charges, freight, postage, and all other charges on 
matfer sent to the patent office must be prepaid in full ; otherwise 
it will not be received. 

4. The personal attendance of applicants at the patent office is 
unnecessary. Their business can be transacted by correspondence. 

5. The assignee of the entire interest of an invention is entitled 
to hold correspondence with the office to the exclusion of the 
inventor. 

6. Where there has been an assignment of an undivided part 
of an invention, the inventor and the assignee will both be recog- 
nized as the proper parties to hold correspondence with the office, 
and all amendments and other actions in such cases must be signed 
by both parties ; but official letters will be sent in such case to the 
post-office address of the inventor, unless he shall otherwise direct. 

7. When an attorney shall have filed his power of attorney, 
duly executed, the correspondence will be held with him. 

8. A double correspondence with the inventor and an assignee, 
or with a principal and his attorney, or with two attorneys, cannot 
generally be allowed. 



821 ATTOENEYs. Rule 17 



9. A separate letter should in every case be written in relation 
to each distinct subject of inquiry or application. Assignments for 
record, final fees and orders for copies or alistracts must be sent 
to the office in separate letters. 

10. When a letter concerns an application, it should state the 
name of the applicant, the title of the invention, the serial number 
of the application (see Rule 31), and the 4ate of filing the same. 

11. When the letters concerns a patent, it should state the 
name of the patentee, the title of the invention, and the number 
and date of the patent. 

12. No attention will be paid to ex parte statements or protests 
of persons concerning pending applications to which they are not 
parties, unless information of the pendency of such applications 
shall have been voluntarily communicated by the applicants. 

13. Letters received at the ofhce will be answered, and orders 
for printed copies filled, without unnecessary delay. Telegrams, if 
not received before 3 o'clock p. m., cannot ordinarily be answered 
until the following day. 

INFORMATION TO CORRESPONDENTS 

14. The office cannot respond to inquiries as to the novelty of 
an alleged invention in advance of an application for a patent, nor 
to inquiries propounded with a view of ascertaining whether any 
alleged improvements have been patented, and, if so, to whom ; 
nor can it act as an expounder of the patent law, or as counselor 
for individuals, except as to questions arising within the office. 

Of the propriety of making an application for a patent, the 
inventor must judge for himself. The office is open to him, and 
its records and models pertaining to all patents granted may be 
inspected either by himself or by any attorney or expert he may 
call to his aid, and its reports are widely distributed. (See Rule 
216.) Further than this the office can render him no assistance 
until his case comes regularly before it in the manner prescribed by 
law. A copy of the rules, with this section marked, sent to the 
individual making an inquiry of the character referred to, is in- 
tended as a respectful answer by the office. Examiners' digests 
are not open to public inspection. 

15. Caveats and pending applications are preserved in secrecy. 
No information will be given, without authority, respecting, the 
filling by any particular person of a caveat or of an application for 
a patent or for the reissue of a patent, the pendency of any 
particular case before the office, the subject-matter of any particular 
application, unless it shalF be necessary to the proper conduct of 
business before the office, as provided by Rules 95, 102, and 126. 

16. After a patent has issued the model, specification, drawings, 
and all documents relating to the case are subject to general in- 
spection, and copies, except of the model, will be furnished at the 
rates specified in Rule 209. 

ATTORNEYS 

17. Any person of intelligence and good moral character may 
appear as the agent or the attorney in fact of an applicant, upon 
filing a proper power of attorney. As the value of patents depends 
largely upon the careful preparation of the specifications and 
claims, the assistance of competent counsel will, in most cases, be 



Rule 18 APPENDIX OF ETJLES OF '79. 822 



of advantage to the applicant; but the value of their services will 
be proportionate to their skill and honesty, and too much care 
cannot be exercised in their selection. The office cannot assume 
responsibility for the acts of attorneys, nor can it assist applicants 
in making selections. It will, however, be unsafe to trust those 
who pretend to the possession of any facilities except capacity and 
diligence for procuring patents in a shorter time or with broader 
claims than others. 

18. Before any attorney, original or associate, will be allowed 
to inspect papers or take action of any kind his power of attorney 
must be filed. No power of attorney purporting to have been 
given to a firm or copartnership will be recognized, either in favor 
of the 'firm or of any of its members, unless all its members shall 
be named in such power of attorney. 

19. Substitution or association can be made by an attorney 
upon the written authorization of his principal; but such authoriza- 
tion will not empower the second agent to appoint a third. 

20. If the principal become dissatisfied he may revoke his 
power of attorney and notify the office, which will then com- 
municate directly with him, or with such other attorney as he may 
lawfully appoint. Attorneys will be promptly notified by the ex- 
aminers in charge of the revocation of their powers of attorney. 

21. Parties or their attorneys will be permitted to examine their 
cases in the attorneys' room, but not in the rooms of the examiners. 
Personal interviews with examiners will be permitted only as here- 
inafter provided. (See Rules 147, 148.) 

22. Attorneys will be required to conduct their business with the 
office with decorum and courtesy. Papers presented in violation of 
this requirement will ordinarily be returned. Complaints against 
examiners and other officers must be made in separate communica- 
tions and will be promptly investigated. For gross misconduct 
the commissioner may refuse to recognize any person as a patent 
agent, either generally or in any particular case ; but the reasons 
for such refusal will be duly recorded and be subject to the ap- 
proval of the secretary of the interior. 

23. Inasmuch as applications cannot be examined out of their 
regular order, except in accordance with the provisions of Rule 62, 
and members of congress can neither examine nor act in patent 
cases without written powers of attorney, applicants are advised 
not to impose upon senators or representatives labor which will 
consume their time without any advantageous results. 

APPLICANTS 

24. A patent may be obtained by any person who has invented 
or discovered any new and useful art, machine, manufacture, or 
composition of matter, or any new and useful improvement there- 
of, not known nor used by others in this country, and not 
patented nor described in any printed publication in this or any 
foreign countrj^, before his invention or discovery thereof, and 
not- in public use or on sale for more than two years prior to 
his application, unless the same is proved to have been abandoned ; 
and by any person who, by his own industry, genius, efforts, and 
expense, has invented and produced any new and original design 
for a manufacture, bust, statue, alto-relievo, or bas-relief : any 
new and original design for the printing of woolen, silk, cotton, 
or other fabrics ; any new and original impression, ornament, pattern. 



823 APPLICATIONS. Rule 31 



print, or picture to be printed, painted, cast, or otherwise placed 
on or worked into any article of manufacture; or any new, useful, 
and original shape or configuration of any article of manufacture, 
the same not having been known nor used by others before his 
invention or production thereof, nor patented nor described in any 
printed publication, upon payment of. the fees required by law 
and other aue proceedings had. 

25. In case of the death of the inventor, the application may 
be made by, and the patent will issue to, his executor or adminis- 
trator. In such case the oath will be made by the executor or 
administrator. 

26. In case of an assignment of the whole interest in the in- 
vention, or of the whole interest in the patent to be granted, the 
patent will, upon request of the applicant or assignee, issue to the 
assignee; and if the assignee hold an undivided part interest, the 
patent will, upon like request, issue jointly to the inventor and the 
assignee ; but the assignment in either case must first have been 
entered of record, and at a day not later than the date of the 
payment of the final fee. The application and oath must be made 
by the actual inventor, if alive, even if the patent is to issue to 
an assignee. If the inventor be dead it may be made by the 
executor or administrator, or by the assignee of the entire interest. 

27. If it appear that the inventor, at the time of taking his 
application, believed himself to be the 'first inventor or discoverer, 
a patent will not be refused on account of the invention or dis- 
covery, or any part thereof, having been known or used in any 
foreign country before his invention or discovery thereof, if it 
had not been before patented or described in any printed publica- 
tion. 

28. Joint inventors are entitled to a joint patent ; neither can 
claim on^ separately. Independent inventors of distinct and inde- 
pendent improvements in the same machine cannot obtain a joint 
patent for their separate inventions ; nor does the fact that one fur- 
nishes the capital and another makes the invention entitle them to 
make application as joint inventors ; but in such case they may 
become joint patentees, upon the conditions prescribed in Rule 26. 

29. The receipt of letters patent from a foreign government 
will not prevent the inventor from obtaining a patent in the 
United States unless the invention shall have been introduced into 
public use in the United States more than two years prior to the 
application. But every patent granted for an invention which has 
been previously patented by the same inventor in a foreign country 
will be so limited as to expire at the same time with the foreign 
patent, or, if there be more than one, at the same time with the 
one having the shortest unexpired term ; but in no case will it be in 
force more than seventeen years. 

THE APPLICATION 

30. Applications for letters patent of the United States must be 
made to the commissioner of patents. A complete application 
comprises the petition, specification, oath, drawings, model, or 
specimen, when required (See Rules 28, 48, 55, 57, 61), and first 
fee of $15.00. The petition, specification, and oath must be written 
in the English language. 

31. No application for a patent will be placed upon the ifiles for 
examination until it is completed. Every application signed or 



Rule 32 APPENDIX OF RULES OF '79. 824 



sworn to in blank, or without actual inspection of the petition and 
specification, or altered or partly filled up after being signed or 
sworn to, will, upon the discovery of such irregularity, at any 
time before the delivery of the patent, be stricken from the files. 
The completed applications of each year will be numbered in regu- 
lar order, the annual series commencing on the 1st of January, 
1880. The applicant will be promptly informed of the serial 
number of his completed application. The application must be 
completed and prepared for examination within two years after 
the filing of the petition ; and in default thereof, or upon failure 
of the applicant to prosecute the same within two years after any 
action thereon, of which notice shall have been duly mailed to him 
or his agent, it will be regarded as abandoned, unless it shall be 
shown, to the satisfaction of the commissioner, that such delay was 
unavoidable. (See Rules 165-167.) 

32. It is desirable that all parts of the complete application 
should be deposited in the office at the same time, and that all 
the papers embraced in the application should be attached together ; 
otherwise a letter must accompany each part, accurately and clearly 
connecting it with the other parts of the application. (See Rule 10.) 

THE PETITION 

33. The petition is a communication duly signed by the appli- 
cant and addressed to the commissioner of patents, stating the 
name and residence of the petitioner, and requesting the grant 
of a patent for the invention therein designated by name, with a 
reference to the specification for a full disclosure thereof. 

SPECIFICATION 

34. The specification is a written description of the invention 
or discovery, and of the manner and process of making, con- 
structing, compounding, and using the same, and is required to be 
in such full, clear, concise, and exact terms as to enable any 
person skilled in the art or science to which it appertains, or with 
which it is most nearly connected, to make, construct, compound, 
and use the same. It must conclude with a specific and distinct 
claim or claims of the part, improvement, or combination which 
the applicant regards as his invention or discovery. 

35. The following order of arrangement should be observed 
when convenient in framing the specification, such portions as 
refer to drawings being omitted when the invention does not 
admit of representation by drawings : 

(1.) Preamble giving the name and residence of the applicant, 
the title of the invention, and the statement required by the last 
clause of Rule 39 ; 

(2.) General statement of the object and nature of the inven- 
tion ; 

(3.) Brief description of the drawings, showing what each 
view represents ; 

(4.) Detailed description, explaining fully the alleged invention, 
and the manner of constructing, practicing, operating, and using it ; 

(5.) Claim or claims; 

(6.) Signature of inventor; 

(7.) Signatures of two witnesses. 

36. The detailed description above referred to must set forth 



825 SPECIFICATIONS. Rule 45 



the precise invention for which a patent is claimed, explaining the 
principle thereof and the best mode in which the applicant has 
contemplated applying that principle, so as to distinguish it from 
other inventions. 

il . Where there are drawings the description will refer by 
figures to the different views and by letters or figures to the 
different parts. 

38. In applications for patents upon mere improvements, the 
specification must particularly point out the parts to which the 
improvement relates, and must by explicit language distinguish 
between what is old and what is claimed as the improvement ; and 
in such cases the description and the drawings, as well as the claims, 
should be conlfined to the specific improvements and such parts as 
necessarily cooperate with them. 

39. Every applicant must distinctly state, under oath, whether 
the invention has been patented to himself or to others with his 
consent or knowledge in a foreign country, and, if it has been, that, 
according to his knowledge and belief, the same has not been in 
public use in the United States for more than two years prior to 
the application in this country; and he must also name such foreign 
country and set forth the number and date of the patent. 

40. TwO' or more independent inventions cannot be claimed in 
one application ; but where several distinct inventions are dependent 
upon each other and mutually contribute to produce a single result, 
they may be claimed in one application. 

41. If several inventions, claimed in a single application, shall 
be found to be of such a nature that a single patent may not be 
issued to cover them, the inventor will be required to limit the 
description and claim of the pending application to whichever in- 
vention he may elect; the other inventions may be made the sub- 
jects of separate applications, which must conform to the rules 
applicable to original applications. If the independence of the 
inventions be clear, such limitation will be made before any action 
upon the merits ; otherwise it may be made at any time before 
final action thereon, in the discretion of the examiner. 

42. When an applicant makes two or more applications relating 
to the same subject-matter of invention, all showing, but only one 
claiming, the same thing, those not claiming it must contain dis- 
claimers thereof, with references to the applications claiming it. 

43. The specification must be signed by the inventor or by his 
executor or administrator, and the signature must be attested by 
two witnesses. Full names must be given, and all names, whether 
of applicants or witnesses, must be legibly written. 

44. The specification and claims and all amendments must be 
written in a fair, legible hand, on but one side of the paper; 
otherwise the office may require them to be printed ; and all 
interlineations and erasures must be clearly marked in marginal or 
foot-notes written on the same sheet of paper. Legal-cap paper 
with the lines numbered is deemed preferable, and a wide margin 
must always be reserved upon the left-hand side of the page, both 
of the specification and of the amendments. 

45. The applicant, if the inventor, must make oath or affirma- 
tion that he does verily believe himself to be the original and Ifirst 
inventor or discoverer of the art, machine, manufacture, composi- 
tion, or improvement for which he solicits a patent, and that he 
does not know and does not believe that the same was ever before 
known or used ; and shall state of what country he is a citizen, 



Rule 46 APPENDIX OF eules of '79. 826 



and where he resides.* An applicant for a reissue must also, in his 
oath, state that he verily believes the original patent to be inoperative 
or invalid, either by reason of a defective or insufficient specification 
or by reason of the patentee claiming as his own invention or dis- 
covery more than he had a right to claim as new, and that the 
error arose by inadvertence, accident, or mistake, and without any 
fraudulent or deceptive intention. 

46. If the application be made by an executor or administrator, 
the form of the oath will be correspondingly changed. The oath 
or affirmation may be made before any person within the United 
States authorized by law to administer oaths, or, when the appli- 
cant resides in a foreign country, before any minister, charge d' 
affaires, counsul, or commercial agent holding commission under the 
go'vernment of the United States, or before any notary public of 
the foreign country in which the applicant may be, the oath being 
attested in all cases, in this and other countries, by the proper 
official seal of the officer before whom the oath or affirmation is 
made. 

47. In case the applicant seeks by amendment to introduce any 
claim not substantially embraced in the statement of invention or 
claim originally presented and therefore not covered by the original 
oath, he will be required to file a supplemental oath to the effect 
that the subject-matter of the proposed amendment was part of his 
invention and was invented before he filed his original application; 
and such supplemental oath must be upon the same paper which 
contains the proposed amendment. 

THE DRAWINGS 

48. The applicant for a patent is required by law to furnish a 
drawing of his invention where the nature of the case admits of it. 

49. The drawing must be signed by the inventor or by his 
attorney in fact, and attested by two witnesses, and must show 
every feature of the invention covered by the claims, and when the 
invention consists of an improvement on an old machine, it must 
exhibit, in one or more views, the invention itself, disconnected 
from the old structure, and also, in another view, so much only of 
the old structure as will suffice to show the connection of the in- 
vention therewith. 

50. Three several editions of patent-drawings are printed and 
published : one for office use, certified copies, etc., of the size 
and character of those attached to patents, the work being about 
6 by 9^ inches ; one reduced to half that scale, or one-fourth the 
surface, of which four will be printed on a page to illustrate the 
volumes distributed to the courts; and one reduction — to about the 
same scale — of a selected portion of each drawing to illustrate the 
Official Gazette. 

This work will all be done by the photo-lithographic or other 
analogous process, and therefore the character of each original 
drawing must be brought as nearly as possible to a uniform stand- 
ard of excellence, suited to the requirements of the process, and 
calculated tO' give the best results, in the interests of inventors, of 
the office, and of the public generally. The following rules will 



*For additional sworn statements which may be embraced in 
this oath or in a separate oath see Rule 39. 



827 DEAwiNGs. Rule 50 



therefore be rigidly enforced, and any departure from them will 
be certain to cause delay in the examination of an application for 
letters patent: 

(1.) Drawings must be made upon paper stiff enough to stand 
in the portfolios. The surface of the paper must be calendered 
and smooth, Indian ink of good quality, to the exclusion of all 
other kinds of ink or color, must be employed, to secure perfectly 
black and solid work. 

(2.) The size of a sheet on which a drawing is made must be 
exactly 10 by IS inches. One inch from its edges a single marginal 
line is to be drawn, leaving the "sight" precisely 8 by 13 inches. 
Within this margin all work and signatures must be included. One 
of the shorter sides of the sheet is regarded as its top, and, measur- 
ing downward from the marginal line, a space of not less than 1^ 
inches is to be left blank for the heading of title, name, number, 
and date. 

(3.) All drawings must be made with the pen only. Every line 
and letter (signatures included) must be absolutely black. This 
direction applies to all lines, however fine, to shading, and to lines 
representing cut surfaces in sectional views. All lines must be 
clean, sharp, and solid, and they must not be too fine or crowded. 
Surface shading, when used, should be open. Sectional shading 
should be made by oblique parallel lines, which may be about one- 
twentieth of an inch apart. 

(4.) Drawings should be made with the fewest lines possible 
consistent with clearness. By the observance of this rule the 
effectiveness of the work after reduction will be much increased. 
Shading (except on sectional views) should be used only on convex 
and concave surfaces, where it should be used sparingly, and may 
even there be dispensed with if the drawing is otherwise well ex- 
ecuted. The plane upon which a sectional view is taken should 
be indicated on the general view by a broken or dotted line. 
Heavy lines on the shade sides of objects should be used, ex- 
cept where they tend to thicken the work and obscure letters of 
reference. The light is always supposed to come from the upper 
left-hand corner, at an angle of forty-five degrees. Imitations of 
wood or surface-graining should not be attempted. 

(5.) The scale to which a drawing is made ought to be large 
enough to show the mechanism without crowding, and two or more 
sheets should be used if one does not give sufficient room to 
accomplish this end; but the number of sheets must never be in- 
creased unless it is absolutely necessary. 

(6.) Letters and figures of reference must be carefully formed. 
They should, if possible, measure at least one-eighth of an inch in 
height, so that they may bear reduction to one-twenty-fourth of an 
inch; and they may be much larger when there is sufficient room. 
They must be so placed in the close and complex parts of draw- 
ings as not to interfere with a thorough comprehension of the same. 
and therefore should rarely cross or mingle with the lines. When 
necessarily grouped around a certain part, they should be placed 
at a little distance, where there is available space, and connected 
by short broken lines with the parts to which they refer. They 
must never appear upon shaded surfaces, and, when it is difficult 
to avoid this, a blank space must be left in the shading where 
the letter occurs, so that it shall appear perfectly distinct and 
separate from the work. If the same part of an invention appear 
in more than one view of the drawing it must always be represented 



Rule 51 APPENDIX OF BULES OF '79. 828 



by the same character, and the same character must never be 
used to designate different parts. 

(7.) The signature of the inventor is to be placed at the lower 
right-hand corner of the sheet, and the signatures of the witnesses 
at the lower left-hand corner, all within the marginal line. The 
title is to be written with pencil on the back of the sheet. The 
permanent names and title will be supplied subsequently by the 
office in uniform style. 

When views are longer than the width of the sheet, the sheet 
is to be turned on its side, and the heading will be placed at the 
right, and the signatures at the left, occupying the same place and 
position as in the upright views, and being horizontal when the 
sheet is held in an upright position ; and all views on the same 
sheet must stand in the same direction. 

(8.) As a rule, one view only of each invention can be shown 
in the Gazette illustrations. The selection of that portion of a 
drawing best calculated to explain the nature of the specific im- 
provement would be facilitated, and the 'final result improved, b}^ 
the judicious execution of a figure with express reference to the 
Gazette, but which might, at the same time, serve as one of the 
figures referred to in the specification. For this purpose, the 
figure may be a plan, elevation, section or perspective view, ac- 
cording to the judgment of the draftsman. It must not cover a 
space exceeding sixteen square inches. All its parts should be 
especially open and distinct, with very little or no shading, and it 
must illustrate the invention claimed only, to the exclusion of all 
other details. When well executed, it will be used without curtail- 
ment or change; but any excessive 'fineness, or crowding, or unneces- 
sary elaborateness of detail, will necessitate its exclusion from the 
Gazette. 

(9.) Drawings should be rolled for transmission to the office, 
not folded. No agent's or attorney's stamp, or advertisement, or 
written address, will be permitted upon the face of a drawing 
within or without the marginal line. 

51. These rules are modified as to drawings for designs. (See 
Rules for Designs, 81, 82.) 

52. All reissue applications must be accompanied by new 
drawings, of the character required in original • applications, and 
the inventor's name must appear upon the same in all cases of 
patents granted or assigned since July, 1870; and such drawings, if 
the original application was filed after July 8, 1870, shall be made 
upon the same scale as the original drawing or upon a larger 
scale, unless a reduction of scale shall be authorized by the com- 
missioner. 

53. The foregoing rules relating to drawings will be rigidly 
enforced ; and every drawing not artistically executed in conformity 
therewith will be returned to the applicant; or, at the applicant's 
option and cost, the office will make the necessary corrections. 

54. Applicants are advised to employ competent artists to make 
their drawings. The office will furnish the drawings, at cost, as 
promptly as its draftsmen can make them, for applicants who can- 
not otherwise conveniently procure them. No employes of the 
patent office, except those regularly assigned to such dut}', will make 
any drawings, whether copies or originals, for applicants, agents, or 
attorneys. 



829 EXAMiiSTATioNs. RuIg 62 



THE MODEL 

55. In all cases which admit of representation by model the 
applicant, if required, shall furnish a model to exhibit advantageously 
the several parts of his invention or discovery. 

56. The model must clearly exhibit every feature of the machine 
which forms the subject of a claim of invention, but should not 
include other matter than that covered by the actual invention or 
improvement, unless it is necessary to the exhibition of the inven- 
tion in a working model. 

57. The model must be neatly and substantially made, of durable 
material, metal being deemed preferable ; but when a material 
forms an essential feature of the invention, the model will be 
constructed of that material. The model must not be more than 
one foot in length, width, or height, except in cases in which the 
commissioner shall admit working models of complicated machines 
of larger dimensions. If made of wood, it must be painted, or 
varnished. Glue must not be used ; but the parts should be so 
connected as to resist the action of heat or moisture. Where 
practicable, to prevent loss, the model or specimen should have the 
name of the inventor permanently^ fixed thereon. In cases where 
models are not made strong and substantial, as here directed, the 
application will not be examined until a proper model is furnished. 

58. A working model is often desirable, in order to enable the 
office fully and readily to understand the precise operation of the 
machine. 

59. In all cases where an application has been rejected more 
than two years the model, unless it is deemed necessary that it 
should be preserved in the office, may be returned to the applicant 
upon demand, and at his expense : and the model, in any pending 
case of less than two years' standing, may be returned to the 
applicant upon the filing of a formal abandonment of the application, 
signed by the applicant in person. (See Rule 165.) ^lodels be- 
longing to patented cases will not be taken from the office except 
in the custody of some sworn employe of the office specially 
authorized by the commissioner, with the written approval of the 
secretary of the interior. 

60. Models filed as exhibits, in contested cases, may be re- 
turned to the applicant. If not claimed within a reasonable time 
they may be disposed of, at the discretion of the commissioner. 

SPECIMENS 

61. When the invention or discovery is a composition of matter 
the applicant, if required by the commissioner, shall furnish speci- 
mens of the composition, and of its ingredients, sufficient in 
quantity for the purpose of experiment. In all cases where the 
article is not perishable a specimen of the composition claimed, 
put up in proper form to be preserved by the office, must be fur- 
nished. 

THE EXAMINATION 

62. All cases in the patent office are classified and taken up 
for examination in regular order, those in the same class being 
examined and disposed of, as far as practicable, in the order in 
which the respective applications are completed. When, however, the 



Rule 63 APPENDIX OF RULES OP '79. 830 



invention is deemed of peculiar importance to some branch of the 
public service, and when, for that reason, the head of some depart- 
ment of the Government specially requests immediate action, the 
case will be taken up out of its order. These, with cases remanded 
by an appellate tribunal for further action, statements of grounds of 
decisions by primary examiners provided for in Rules 130, and 140, 
applications for extensions, for reissue, for letters patent for in- 
ventions for which foreign patents have already been obtained, and 
for designs, have precedence over all others in the order enumerated. 
Action upon such cases in the order indicated will be promptly 
made by the examiner in charge, to the exclusion of all other 
business interfering therewith.* 

63. The ifirst step in the examination of an application will be 
to determine whether it is, in all respects, in proper form. If, 
however, the objections as to form are not vital, the examiner 
may proceed to the consideration of the application on its merits; 
but in such case he must if possible, in his first letter to the appli- 
cant, state all his objections, whether formal or otherwise, and 
until the formal objections are disposed of no further action will 
be taken upon its merits without the order of the commissioner. 

REJECTIONS AND REFERENCES 

64. Whenever, on examination, any claim of an application is 
rejected for any reason whatever, the applicant will be notified 
thereof, and the reason for such rejection will be fully and pre- 
cisely stated, and such information and references will be given as 
may be useful in judging of the propriety of prosecuting his ap- 
plication or of altering his specification ; and if, after receiving such 
notice, he shall persist in his claim, with or without altering his 
specification, the case will be reexamined. If upon reexamination 
it shall be again rejected, the reasons therefor will be fully and 
precisely stated. (See Rule 89.) 

65. Upon the rejection of an application for want of novelty, 
the examiner must cite the best references at his command. If 
patents be cited, their dates and numbers, the names of the patentees, 
and the classes of invention must be stated. When the reference 
shows or describes inventions other than that claimed by the appli- 
cant, the particular part relied on will be designated as nearly as 
practicable. The pertinence of the reference, if not obvious, must 
he clearly explained and the anticipated claim specified. If printed 
publications be cited, the title, date, page, or plate, and place 
of publication, or place where a copy can be found, will be given. 
Where reference is made to facts within the personal knowledge of 
an employe of the office, the data will be as specific as possible, 
and the reference must be supported by the affidavit of such em- 
ploye, which shall be subject to contradiction, explanation, and 
coroboration by the affidavits of the applicant and other persons. 
If the patent or other printed matter, plates, or drawings, so re- 
ferred to, are in the possession of the office, copies will be fur- 
nished at cost upon the order of the applicant. (See Rule 171.) 

66. Whenever, in the treatment of an ex parte application, an 
adverse decision is made upon any preliminary or intermediate ques- 



*Note. — If an application is found to contain patentable subject- 
matter interfering with a caveat, its allowance will be suspended, 
as hereinafter provided in Rule 196. 



831 AMENDMENTS. Rule 72 



tion, without the rejection of any claim, notice thereof, together 
with the reasons therefor, will be given to the applicant, in order 
that he may judge of the propriety of the action. If, after re- 
ceiving such notice, he traverse the propriety of the action, the 
matter will be reconsidered. 

AMENDMENTS AND ACTIONS BY APPLICANTS 

67. The applicant has a right to amend before or after the first 
rejection; and he may amend as often as the examiner presents any 
new references or reasons for rejection. In so amending the appli- 
cant must clearly point out all of the patentable novelty which he 
thinks the case presents, in view of the state of the art disclosed 
by the references cited or objections made. He must also show 
how the amendments avoid such references or objections. After 
such action on all the claims as shall entitle the applicant to an 
appeal to the board of examiners-in-chief amendment will not 
ordinarily be allowed. If such amendments are offered good and 
sufficient cause therefor must be shown, together with the reasons 
why they were not earlier presented ; and, if satisfied on these 
points, the examiner may admit and consider them. If the examiner 
shall refuse to admit and consider such amendments an appeal will 
lie to the commissioner, as in other cases. 

68. In order to be entitled to the reconsideration provided for 
in Rule 66, the applicant must make request therefor in writing, 
and he must distinctly and specifically point out the supposed 
errors of the examiner's action. The mere allegation that the 
examiner has erred will not be received as a proper reason for 
such reconsideration. This provision does not apply to the case 
of a dement for reexamination upon the rejection of a claim under 
Rule 64. 

69. In original applications, which are capable of illustration by 
drawing or model, all amendments of the model, drawings, or speci- 
fication or of additions thereto must conform to at least one of 
them as they were at the time of the ifiling of the application. 
Matter not found in either involving a departure from the original 
invention can be shown or claimed only in a separate application. 
If the invention does not admit of illustration by drawing or model, 
amendment of the specification is permitted upon proof satisfactory 
to the commissioner that the matter covered by the proposed amend- 
ment was a part of the original invention ; the affidavits prescribed 
in Rule 47 may or may not be sufficient. 

70. The specification must be amended and revised, when re- 
quired, for the purpose of correcting inaccuracies of description 
or unnecessary prolixity, and of securing correspondence between 
the claim and the other parts of the specification. 

71. After the completion of the application the office will not 
return the specification for any purpose whatever. The model or 
drawing (but not both at the same time) may be withdrawn for 
correction. If applicants have not preserved copies of such papers 
as they wish to amend, the office will furnish them on the usual 
terms. 

72. All amendments of specification or claims must be made on 
sheets of paper separate from the original. Even when the amend- 
ment consists in striking out a portion of the specification or of 
the claims the same course must be observed. Erasures must not 
be made by the applicant. In every case of amendment the exact 



Rule 73 APPEisTDix of kules of '79. 832 



word or words to be stricken out or inserted must be clearly speci- 
fied, and the precise point indicated where the erasure or insertion 
is to be made. 

12). When an amendatory clause is amended it must be wholly 
rewritten, so that no interlineation or erasure shall appear in the 
clause, as finally amended when the case is passed to issue. If the 
number or nature of the amendments shall render it otherwise 
difficult to consider the case, or to arrange the papers for printing, 
or copying, the examiner or commissioner may require the entire 
specification to be rewritten. 

74. When an original or reissue application is rejected on 
reference to an expired or unexpired domestic patent, which sub- 
stantially shows or describes but does not claim the rejected in- 
vention, or to a foreign patent, or to a printed publication, and 
the applicant shall make oath to facts showing a completion of 
the invention before the ifiling of the application for the domestic 
patent, or before the date of the foreign patent, or before the 
date at which the printed publication was made, and shall also 
make oath that he does not know and does not believe that the 
invention has been in public use, or on sale, in this country for 
more than two years prior to his application, and that he has never 
abandoned the invention, then the patent or publication cited will 
not bar the grant of a patent to the applicant, except upon inter- 
ference as provided in Rule 94. 

75. When an application is rejected on reference to an expired 
or unexpired domestic patent which shows or describes, but does 
not claim, the rejected invention, or to a foreign patent, or to a 
printed publication, or to facts within the personal knowledge of 
an employe of the office, set forth in an affidavit of such employe, 
or on the ground of public use or sale, or upon a' mode or 
capability of operation attributed to a reference, or because the 
alleged invention is held to be inoperative, or frivolous, or in- 
jurious to public health or morals, affidavits or depositions support- 
ing or traversing these references or objections may be received: 
but they will be received in no other cases, without special per- 
mission of the commissioner. 

16. If an' applicant neglect to prosecute his application for two 
years after the date when the last official notice of any action by 
the office was mailed to him the application will be held to be 
abandoned, as set forth in Rule 165. 

n . Applications in interference can be amended only as provided 
in Rules 104, 124, 125. After notice of allowance of an application 
for a patent, no amendments will be received, nor will the ex- 
aminer have any jurisdiction over the application, unless by authority 
of the commissioner. Amendments not affecting the merits may 
be made after allowance and after payment of the final fee, on the 
recommendation of the primary examiner, approved by the commis- 
sioner, without withdrawing the application from issue. (See Rule 
160.) 

DESIGNS 

78. A patent for a design may be granted to any person, whether 
citizen or alien, in the cases specified in Rule 24, upon payment of 
the duty required by law, and other due proceedings had. as in 
other cases of invention or discoveries. 

79. Patents for designs are granted for the term of three and 



833 EEissuES. Rule 86 



one-half years, or for seven years, or for fourteen years, as the 
applicant I'nay, in his application, elect. 

80. The proceedings in application for patents for designs are 
substantiall}^ the same as in application for other patents. The 
specilication must distinctly point out the characteristic features 
of the design, and carefully distinguish between what is old and 
what is believed to be new. The claims also, when the design ad- 
mits of it, should be as distinct and specific as in the case of 
other patents. The following order of arrangement should be ob- 
served, when convenient, in framing the specification : 

(1.) Preamble showing name and residence of the applicant, 
title of the design, and the name of the article for which the 
design has been invented. 

(2.) Detailed description of the design as it appears in the 
drawing or photograph, letters or figures of reference being used. 

(3.) Claim or claims. 

(4.) Signature of inventor. 

(5.) Signatures of two witnesses. 

81. When the design can be sufificienth^ represented by drawings 
or photographs a model will not be required. 

82. Whenever a photograph or an engraving is employed to 
illustrate the design it must be mounted upon Bristol-board, 10 by 
15 inches in size, and properly signed and witnessed. The applicant 
will be required to furnish ten extra copies of such photograph or 
engraving (not mounted), of a size not exceeding 7^ inches by 11. 
Negatives are not required. 

83. Whenever the design is represented by a drawing made to 
conform to the rules laid down for drawings of mechanical inven- 
tions but one copy need be furnished. Additional copies will be 
supplied by the photo-lithographic process at the expense of the 
patent office. (For Form.s to be used in Application for Design 
Patents see Appendix, Forms 9 and 15.) 

REISSUES 

84. A reissue is granted to the original patentee, his legal 
representatives, or the assignees of the entire interest, when, by 
reason of a defective or insufficient specification, or by reason 
of the patentee claiming as his invention or discovery more than 
he had a right to claim as new, the original patent is inoperative 
or invalid, provided tl]e error has arisen from inadvertence, acci- 
dent, or mistake, and without any fraudulent or deceptive intention. 
In the cases of patents issued and assigned prior to July 8, 1870, 
the applications for reissue may be made by the assignees ; but, in 
the cases of patents issued or assigned since that date, the appli- 
cations must be made and the specification sworn to by the in- 
ventors, if they be living. 

85. The petition for a reissue must be accompanied with a 
certified copy of the abstract of title, giving the names of all 
assignees owning any undivided interest in the patent; and in case 
the application is made by the inventor, it must be accompanied 
with the written assent of such assignees. If the reissue shall be 
granted the cost of the abstract of title will be refunded. 

86. A reissue will not be granted until the existence of the con- 
ditions prescribed therefor by law shall have '"een duly shown. The 
affidavit of the applicant will be prima facie evidence as to in- 
advertence, accident, mistake, fraud, and deceptive intent, subject 



Eule 87 APPENDIX OF RULES OF '79. 834 



to contradiction or confirmation by the records of the office, by 
the affidavits of employes of the office having personal knovirledge 
of the facts, or by such other affidavits as the commissioner shall, 
without disclosing the pendency of the appHcation, admit as evidence 
in the case.* 

87. No nev\r matter shall be introduced into the reissue speci'fi- 
cation, nor in case of a machine shall the model or drawings be 
amended except each by the other; but, when there is neither model 
nor drawing, amendments may be made upon proof satisfactory to 
the commissioner that such new matter or amendment was a part 
of the original invention, and was omitted from the specification 
by inadvertence, accident, or mistake. 

88. The commissioner may, in his discretion, cause several 
patents to be issued for distinct and separate parts of the thing 
patented, upon demand of the applicant, and upon payment of the 
required fee for each division of such reissued letters patent. 
Each division of a reissue constitutes the subject of a separate 
specification descriptive of the part or parts of the invention claimed 
in such division ; and the drawing may represent only such part or 
parts subject to the provisions of Rule 49. Unless it shall be 
otherwise ordered by the commissioner all the divisions of a reissue 
will issue simultaneously; if there be controversy as to one, the 
others will be withheld from issue until the controversy is ended 
unless he shall otherwise order. 

89. In cases of applications for reissue, an original claim, if 
reproduced in the amended specification, is subject to reexamina- 
tion, and the entire application will be revised and restricted in 
the same manner as original applications. 

90. The application for a reissue must be accompanied by a 
surrender of the original patent, or, if that is lost, by an affidavit 
to that effect and a certified copy of the patent; but if a reissue 
be refused, the original patent will, upon request, be returned to 
the applicant. 

91. Matter which is shown and described, and might have been 
lawfully claimed, in an unexpired patent, but was not claimed by 
reason of a defect or insufficiency in the specification, arising 
from inadvertence, accident, or m.istake, and without fraud or de- 
ceptive intent, can not be subsequently claimed by the patentee in 
a separate patent, but only in a reissue of the original patent. 

INTERFERENCES 

92. An interference is a proceeding instituted for the purpose 
of determining the question of priority of invention between two 
or more parties claiming substantially the same patentable invention. 
The fact that one of. the parties has already obtained a patent will 
not prevent an interference ; for, although the commissioner has no 
power to cancel a patent, he may grant a patent for the same in- 
vention to another person who proves to be the prior inventor. 

93. Interferences will be declared in the following cases, when 
all the parties claim substantially the same patentable invention : 

(1.) Between two or more original applications. 
(2.) Between an original application and an unexpired patent, 
when the applicant, having been rejected on the patent, shall 'file 



*Note. — As to drawings in reissue applications, see Rule 52. 



835 iNTEEFEEENCEs. Rule 97 



an affidavit showing that he made the invention before the 
patentee's application was ifiled. 

(3.) Between an original application and an application for the 
reissue of a patent granted during the pendency of such original 
application. 

(4.) Between an original application and a reissue application 
when the original applicant shall file an affidavit showing that he 
made the invention before the patentee's original application was 
filed. 

(5.) Between two or more applications for the reissue of 
patents granted on applications pending at the same time. 

(6.) Between two or more applications for the reissue of 
patents granted on application not pending at the same time, when 
the applicant for reissue of the later patent shall file an affidavit 
showing that he made the invention before the application on 
which the earlier patent was granted was filed. 

(7.) Between a reissue application and an unexpired patent, 
if the original applications were pending at the same time, and 
the reissue applicant shall file an affidavit showing that he made 
the invention before the original application of the other patentee 
was filed. 

(8.) Between an application for reissue of a later unexpired 
patent and an earlier unexpired patent granted before the original 
application of the later patent was filed, if the reissue applicant 
shall file an affidavit showing that he made the invention before 
the original application of the earlier patent was filed. 

94. The notices provided for in Rules 97 and 102 will be sent 
to all applicants having pending applications showing but not 
claiming the invention, and if such applicants shall, within the 
time fixed for filing the statements provided for in Rules 101 and 
105, ifile such statements, together with amendments of their ap- 
plications duly claiming the invention, they shall be made parties to 
the interference, but otherwise shall be excluded therefrom. 

The notice provided for in Rules 97 and 102 will be sent to all 
grantees of unexpired patents showing, but not claiming, the in- 
vention, and if such patentees shall, within the time limited for 
filing the statements provided for in Rules 101 and 105, file such 
statements, together with reissue applications duly claiming the 
invention, they shall be made parties to the interference ; but 
otherwise they shall be excluded therefrom without prejudice to 
their right of reissue. (See Rule 74.) 

95. Before the declaration of interference all preliminary ques- 
tions must be settled by the principal examiner, and the issue must 
be clearly defined; the invention which is to form the subject of 
the controversy must be decided to be patentable, and the claims 
of the respective parties must be put in such condition that they 
will not require alteration after the interference shall have been 
finally decided, unless the testimony adduced upon the trial shall 
necessitate or justify such change. 

96. Where, however, a party who is required to put his case 
in a condition proper for an interference fails to do so within a 
reasonable time specified, the declaration of interference will not 
be delayed. After final judgment of priority the application of 
such party will be held for revision and restriction, subject to 
interference with other applications or new references. (See 
Rule 93.) 

97. When an interference is found to exist and the applications 



Rule 98 APPENDIX OF eules of '79. 836 



are prepared therefor, the principal examiner will forward to the 
examiner of interferences notices of interference for all the parties 
as specified in Rule 102, which will disclose the name and residence 
of each party, and that of his attorney, the date of the filing of 
his application, and, if his case be a patent, its date and number, 
the date of its application, the ordinals of conflicting claims, and 
the invention claimed, which shall be clearly and concisely defined, 
in so many counts or branches as may be necessary in order to 
include all interfering claims. 

98. Upon receipt of the notices of interference, the examiner of 
interferences will make an examination thereof in order to ascer- 
tain whether the issue between the parties has been clearly defined, 
and whether it is otherwise correct. If he be of the opinion, 
upon such examination, that the notices are ambiguous in this 
particular, or are imperfect in any material point, he will transmit 
his objections to the principal examiner, who will promptly notify 
him of his decision to amend or not to amend them. 

99. In case of a material disagreement between the examiner of 
interferences and, the principal examiner, they shall refer the points 
of difference to the commissioner for decision. 

100. The principal examiner will retain jurisdiction of the case 
until the declaration of interference is made. 

101. When the notices of interference have been settled, the 
examiner of interferences will 'add thereto a designation of the 
time within which the statements required by Rule 105 must be 
Ifiled, and will institute and declare the interference by forwarding 
the notices to the several parties to the interference. 

102. Notice of interference will be forwarded, by the examiner 
of interferences, to all the parties, or to their attorneys, or, in 
case the application or patent in interference has been assigned, 
to the assignees. When one of the parties has received a patent, 
a notice will be sent to the patentee and to his attorney of record. 
When one of the parties resides abroad and has no known agent 
in the United States, notice, in addition to that sent by mail, may 
be given by publication in the Official Gazette for such period 
of time as the commissioner may direct. Whenever it shall be 
found that two or more parties whose interests are in conflict 
are represented by the same attorney, the examiner in charge will 
notify each of said principal parties, and also the attorney, of this 
fact. 

103. Upon the institution and declaration of the interference, as 
provided in Rule 101, the examiner of interferences will take 
jurisdiction of the same, which will then become a contested case ; 
but the primary examiners will determine the motions mentioned 
in Rule 116, as therein provided. 

104. An applicant involved in an interference may, before the 
date fixed for the filing of his statement (see Rule 105), in order 
to avoid the continuance of the interference, disclaim, over his own 
signature, attested by two witnesses, the invention of the particular 
matter in issue, and upon such disclaimer, and the cancellation of 
any claims involving such interfering matter, judgment shall be 
rendered against him, and the disclaimer shall be embodied in and 
form part of his specification. (See Rules 187, 188.) 

105. Each party to the interference will be required to file a 
concise statement, under oath, showing the date of his original 
conception of the invention, of its illustration by drawing or model, 



837 INTEEFERENCES. RuIg 112 



of its disclosure to others, of its completion, and of the extent of 
its use. The parties will be strictly held in their proof to the 
dates set up in their statements. The statement must be sealed 
up before filing (to be opened only by the examiner of interfer- 
ences), and the name of the party filing it, the title of the case, 
and the subject of the invention indicated on the envelope. The 
statements shall not be open to the inspection of the opposing 
parties until both shall have been filed, or the time for filing both 
with any extension thereof shall have expired, nor then, unless 
they have been examined by the proper officer and found to be 
satisfactory. 

106. If, on such examination, a statement is found to be defec- 
tive in any particular, the party shall be notified of the defect, 
and a time assigned within which he must cure such defect by an 
amended statement ; but in no case will any original or amended 
statement be returned after it has been once filed. 

107. If either party to an interference fail to file a statement, 
or if the statement of either party fail to .overcome the prima 
facie case made by the respective dates of application, the other 
may demand an immediate adjudication of the case upon the 
record. Where there are more than two parties to the interference, 
and any of them fail to file their statements, judgment may be 
rendered upon the record as to such parties, and the interference 
will proceed between the remaining parties. 

108. If any party to an interference fail to file a statement, no 
testimony will subsequently be received from him to prove that he 
made the invention at a date prior to his application. The state- 
ment can in no case be used as evidence in behalf of the party 
making it. 

109. If either party require a postponement of the time for 
filing the statements, he will present his motion duly served on 
the other parties, with his reasons therefor, supported by affidavit, 
prior to the day previously fixed upon. But the examiner of 
interferences may, in his discretion, dispense with services of 
notice of such motion. 

110. In case of material error in the statement, arising through 
inadvertence or mistake, it may be corrected on motion (see Rule 
149), upon showing to the satisfaction of the commissioner that its 
correction is essential to the ends of justice. The rhotion to cor- 
rect the statement must be made, if possible, before the taking 
of any testimony, and as soon as practicable after the discovery of 
the error. 

111. In original proceedings in cases of interference the several 
parties will be presumed to have made the invention in the chrono- 
logical order in which they filed so much of their respective applica- 
tions for patents as clearly illustrates and describes the invention ; 
and the burden of proof will rest upon those who shall seek to 
establish a different state of facts. 

112. A time will be assigned in which the junior applicant shall 
complete his testimony in chief, and a further time in which the 
other party shall complete the testimony on his side, and a further 
time in which the junior applicant may take rebutting testimony, 
but shall take no other. If there be more than two parties, either 
patentees or applicants, the time for taking testimony will be so 
arranged that each shall have an opportunity to prove his case 
against prior applicants and to rebut their evidence, and also to 
meet the evidence of junior applicants. 



Rule 113 APPENDIX OF EULES OF '79. 838 



113. If either party fail to take his testimony within the time 
assigned to him, all junior applicants having duly, taken theirs, 
the case may, on motion duly made and served on such party, be 
set for hearing at any time not less than ten days after the hearing 
of the motion. 

114. If either party desire to have the hearing postponed, he 
will make application for such postponement by motion (see Rule 
149), and will show sufficient reason therefor by affidavit. 

115. If either party desire an enlargement of the time assigned 
to him for taking testimony, he will make application therefor as 
provided for in Rule 150 (5). 

116. Motions to dissolve an interference which deny the patent- 
ability of an applicant's claim, or his right to make the claim, will 
be submitted to the examiner of interferences before the day 'fixed 
for 'filing the statements provided for in Rules 97 and 102, and will 
be transmitted by him, with the files and papers, to the primary 
examiner, who will take jurisdiction of the case for the determina- 
tion of such motions, and will return the files and papers to the 
examiner of interferences, with his decision, at the expiration of 
the time limited for appeal, if no appeal shall have been taken, 
or, sooner if the party entitled to appeal shall file a waiver in 
writing of his right to appeal ; and such decision will be binding 
on the examiner of interferences unless reversed or modified on 
appeal. From a decision of the primary examiner on such motion 
denying the patentability of a claim or the right of an applicant 
to make it an appeal may be taken ex parte to the examiners-in- 
chief ; but from his decision affirming its patentability or the ap- 
plicant's right no appeal can be taken. 

117. Motions to dissolve an interference upon the ground that 
no interference in fact exists, or that there has been such irregu- 
larity in declaring the same as will preclude the proper determina- 
tion of the question of priority between the parties, and all other 
lawful motions except those mentioned in Rule 116, will be made 
before the tribunal having jurisdiction at the time. Such motions 
should, if practicable, be made before the taking of testimony, and 
it must always appear that they are made in good faith, and im- 
mediately after the discovery of the grounds on which they are 
based. If grounds for such a motion are discovered at a time 
when it cannot be properly made, they may on due notice be urged 
at the hearing b~efore, and will be disposed of by, the tribunal con- 
sidering the case, as provided in Rule 120. 

118. Appeal may be taken directly to the commissioner from de- 
cisions on all motions, except motions to dissolve interferences, 
denying the patentabiHty of applicants' claims, or their right to make 
the claims, and other lawful motions involving the merits of the 
case, which, when appealable, may be appealed to the board of 
examiners-in-chief. (See Rule 116.) 

119. After the interference is finally declared, it will not be 
determined without judgment of priority, founded upon the testi- 
mony, except as otherwise herein provided for. 

120. In their decision of the question of priority, or before such 
decision, the examiner of interferences and the examiners-in-chief 
will direct the attention of the commissioner to any fact not re- 
lating to priority which may have been brought to their notice (by 
motion or otherwise), and which, in their opinion, amounts to a 
statutory bar to the grant of a patent to either of the parties for 
the claim or claims in interference. The commissioner may, be- 



839 APPEALS. Rule 129 



fore judgment on the question of priority of invention, suspend the 
interference, and remand the case to the primary examiner for the 
consideration of the statutory bar so suggested, subject to appeal 
to the examiners-in-chief, as in other cases. If the case shall not 
be so remanded the primary examiner will, after judgment, consider 
and determine the same, unless it shall have been previously dis- 
posed of by the commissioner. 

121. A second interference will not be declared upon a new 
application on the same invention filed by either party, nor will 
a decision be set aside after judgment, except in accordance with 
the principles governing the granting of new trials. 

122. If at any time during the pendency of an interference the 
primary examiner discover new references, he may request a sus- 
pension of the interference for their consideration ex parte until 
their pertinency shall be determined, when the files and papers will 
be returned to the examiner of interferences and the interferences 
dissolved or reinstated in accordance with such determination. 

123. The primary examiner may request a suspension of an 
interference for the purpose of adding new parties; but no new 
parties will be added after the taking of testimony without the 
special order of the commissioner. 

124. No amendments to the specifications will be received during 
the pendency of an interference, except as provided in Rule 104. 

125. When a part only of the claims of an application are in- 
volved in an interference, the applicant may withdraw from his 
appHcation the claims adjudged not to interfere, and 'file a new 
application therefor, if the application can be legitimately divided, 
and if no more of the devices claimed in one is shown or de- 
scribed in the other than is necessary to an intelligent under- 
standing of the invention claimed in the latter : Provided, That 
no claim shall be made in the second application broad enough to 
include matter claimed in the ifirst application as amended. (See 
Rule 42.) 

126. When applications are declared to be in interference, the 
interfering parties will be permitted to see or obtain copies of 
the interfering claims, and of so much of the specifications as 
relate thereto. 

127. When it shall appear, on motion duly made, and upon 
satisfactory proof, that by reason of the inability or refusal of the 
inventor to prosecute or defend an interference, or from other cause, 
the ends of justice shall require that an assignee of an undivided 
interest in the invention be permitted to prosecute or defend the 
same, the commissioner may so order. 

APPEALS. 

128. Every applicant for a patent or the reissue of a patent,, 
any of the claims of whose application have been twice rejected 
upon grounds involving the merits of the invention, such as lack of 
novelty or utility, abandonment, public use, or want of identity 
of invention either in amended or in reissue applications, may 
appeal from the decision of the primary examiner to the board of 
examiners-in-chief, having once paid a fee of ten dollars. The 
appeal must be made in writing, signed by the party, or his duly 
authorized agent or attorney, setting forth the points of the de- 
cision upon which the appeal is taken and duly fi'led. 

129. There must be two rejections of the claims as originally 



Rule 130 APPENDIX OF EULES OF '79. 840 



filed, or, if amended in matter of substance, of the amended claims, 
and all the claims must be passed upon, and all preliminary and 
intermediate questions relating to matters not affecting the merits 
of the invention settled, before the case is appealed to the ex- 
aminers-in-chief. 

130. Upon the filing of the appeal the same shall be submitted 
to the primary examiner, who, if he 'find the appeal to be regular 
in form, shall furnish the examiners-in-chief with a written state- 
ment of the grounds of his decision on all the points involved 
in the appeal, with copies of the rejected claims, and with the 
references applicable thereto. If the primary examiner shall decide 
that the appeal is not regular in form, an appeal from such decision 
may be taken directly to the commissioner as provided in Rule 140. 

131. The appellant shall, before the day of hearing, ifile a brief 
of the authorities and arguments on which he will rely to maintain 
his appeal. 

132. If the appellant desire to be heard orally before the ex- 
aminers-in-chief, he will so indicate when he files his appeal; a day 
of hearing will then be fixed, and due notice of the same given him. 

133. In contested cases the appellant shall have the right to 
make the opening and closing arguments unless it shall be other- 
wise ordered by the tribunal having jurisdiction of the case. 

134. The examiners-in-chief in their decision will affirm or 
reverse the decision of the primary examiner only on the points 
on which appeal shall have been taken. (See Rule 128.) If they 
shall discover any apparent grounds not involved in the appeal for 
granting or refusing letters patent in the form claimed, or in any 
other form, they will annex to their decision a statement to that 
effect, with such recommendation as they shall deem proper. If 
an appeal shall not be taken from their decision to the commis- 
sioner, the primary examiner will, at the expiration of the limit 
of appeal, resume jurisdiction of the case and proceed therewith 
in accordance with such decision. 

From any judgment of the primary examiner, on points embraced 
in the recommendation annexed to the decision adverse to the 
appliant, appeal may be taken on question involving the merits to 
the board of examiners-in-chief and on other questions to the 
commissioners, as in other cases. 

If an appeal shall be taken from the decision of the examiners- 
in-chief to the commissioner the commissioner, whenever, in his 
opinion, substantial justice shall require it, may, either before or 
after final judgment, remand the case to the primary examiner for 
consideration of any amendment or action based upon the recom- 
mendation annexed to the decision of the examiners-in-chief. 

If the commissioner, in revising the decision of the examiners- 
in-chief, shall discover any apparent grounds for granting or re- 
fusing letters patent not involved in the appeal, he will, before or 
after final judgment, whenever, in his opinion, substantial justice 
shall require it, give reasonable notice thereof to the parties ; and 
if any amendment or action based thereon shall be proposed, he 
will remand the case to the primary examiner for consideration. 

From decisions of the primary examiner, in cases remanded, as 
herein provided, appeal will lie to the board of examiners-in-chief, 
or directly to the commissioner, as in other cases. 

135. If affidavits be received, under Rule 75, after the case has 
been appealed, the application will be remanded to the primary 
examiner for reconsideration. 



841 HEAEiNGS. Rule 146 



136. From the adverse decision of the board of examiners-in- 
chief appeal may be taken to the commissioner in person, upon 
payment of the fee of twenty dollars required by law. 

137. Cases which have been heard and decided by the commis- 
sioner on appeal will not be reopened except by the commissioner ; 
and cases which have been decided by the examiners-in-chief will 
not be reheard by them, when no longer pending before them, 
without the written authority of the commissioner. 

138. Cases will be regarded as pending before a tribunal until 
appeal has been taken from its decision, or until the limit of appeal 
which must be ifixed in each case has expired. 

139. Cases which have been deliberately decided by one com- 
missioner will not be reconsidered by his successor except in ac- 
cordance with the principles which govern the granting of new 
trials. 

140. Decisions of examiners upon preliminary or intermediate 
questions, not involving the merits of the case, once repeated, will 
be reexamined by the commissioner upon written statements of 
the points of appeal, and of the grounds of the examiners' decisions, 
as in other appeals. For appeals of this class no fee is required. 

141. In cases of interference parties have the same remedy by 
appeal to the examiners-in-chief and to the commission as in ex 
parte cases; but no appeal lies in such cases from the decision of 
the commissioner. 

142. Appeals in interference cases must be accompanied with 
brief statements of the reasons therefor; and both parties will be 
required to file briefs of their arguments before the day of hearing. 
Printed briefs are in all cases preferred. 

143. From the adverse decision of the commissioner upon the 
claims of an application an appeal may be taken to the supreme 
court of the District of Columbia sitting in banc. On taking such 
appeal, the applicant is required, under the rules of the court, to 
pay to the clerk of the court a docket-fee of ten dollars, and he is 
also required by law to lay before the court certifi-ed copies of all 
the original papers and evidence in the case. The petition should 
be filed and the fee paid at least ten days before the commencement 
of the term of court at which the appeal is to be heard. 

144. Immediately upon taking an appeal the appellant must give 
notice thereof to the commissioner of patents, and file in the 
patent office his reasons of appeal, specifically set forth in writing. 

145. The docket for the trial of cases appealed from the decision 
of the commissioner of patents will be called on the ifirst day of 
each session of the supreme court of the District of Columbia in 
general term. These sessions are held three in each year, and be- 
gin, respectively, on the first Monday in January, the third Monday 
in April, and the fourth Monday in September. (For Forms of 
Appeals and Rules of the Supreme Court of the District of 
Columbia respecting Appeals, see Appendix, Forms 29-36.) 

HEARINGS AND INTERVIEWS 

146. Hearings will be had by the commissioner at 10 o'clock 
a. m., and by the board of examiners-in-chief and the examiner 
of interferences at 1 o'clock p. m., on the day appointed, unless 
some other hour be specially designated. If either party in a 
contested case, or the appellant in an ex parte case, appear at the 
proper time, he will be heard by the examiner of interferences or 



Rule 147 APPENDIX OF EULES OF '79. 842 



the examiners-in-chief ; but a conj:ested case will not be taken 
up for oral argument after the day of hearing, except by consent 
of both parties. If the engagements of the tribunal having 
jurisdiction of the case be such as to prevent it from being taken 
up on the day of hearing, a new assignment will be made, or the 
case will be continued from day to day until heard. Unless it 
shall be otherwise ordered before the hearing begins, oral arguments 
will be limited to one hour for each party. After a contested case 
has been argued, nothing further relating thereto will be heard 
unless upon request of the tribunal having jurisdiction of the case; 
and all interviews for this purpose with parties in interest or their 
attorneys will be invariably denied. 

147. Interviews with examiners concerning applications and 
other matters pending before the office must be had at such times, 
within office hours, as the respective examiners may designate, in 
the examiners' rooms, with the principal examiners, or, in their 
absence, with the assistants in charge; they will not be had at any 
other time or place without the written authority of the commis- 
sioner. 

148. Interviews for the discussion of pending applications will 
not be had prior to the first official action thereon. 

MOTIONS 

149. In contested cases reasonable notice of all motions, and 
copies of motion-papers and affidavits, must be served as provided 
for in Rule 150 (2). Proof of such service must be made before 
the motion will be entertained by the office ; and motions will not 
be heard in the absence of either party except upon default after 
due notice. Motions will be heard in the first instance by the 
officer or tribunal before whom the particular case may be pend- 
ing ; but an appeal from the decision rendered may be taken on 
questions involving the merits of the case to the board of examiners- 
in-chief ; on other questions, directly to the commissioner. In 
original hearings, on motions, the moving parties shall have the 
right to make the opening and closing arguments. In contested 
cases the practice on points to which the rules shall not be ap- 
plicable will conform, as nearly as possible, to that of the United 
States courts in equity proceedings. 

TAKING AND TRANSMITTING TESTIMONY 

150. The following rules have been established for taking and 
transmitting testimony in extensions, interferences, and other con- 
tested cases ; 

(1.) Before the depositions of witnesses are taken by either 
party due notice shall be given to the opposite party, as hereinafter 
provided, of the time and place when and where the depositions will 
be taken, of the cause or matter in which they are to be used, 
and of the names and residences of the witnesses to be examined, 
so that the opposite party shall have full opportunity, either in 
person or by attorney, to cross-examine the witness. If the op- 
posite party shall attend the examination of witnesses not named 
in the notice, and shall either cross-examine such witnesses or fail 
to object to their examination, he shall be deemed to have waived 
any objection to their examination based on want of notice thereof. 
Neither party shall take testimony in more than one place at the 



843 TAKING TESTIMONY. Rule 150 



same time, or so nearly at the same time as not to allow reasonable 
time to travel from one place of examination to the other. 

(2.) The notice for taking testimony or for motions must be 
served (unless otherwise stipulated in an instrument in writing 
filed in the case) upon the attorney of record, if there be one, or, 
if there be no attorney of record, then upon the adverse party, and 
it must give the opposite part}' reasonable time to reach the place of 
examination. Such service may be made by delivering a copy of 
the notice to the adverse party or attorney, by leaving a copy at 
the usual place of business of the part}' or attorney with some one 
in the employment of such party or attorney, or by leaving a copy 
at the party's usual place of residence with a member of his 
family, or by transmission by registered letter, or by express, or 
when it shall be shown, to the satisfaction of the commissioner' 
that neither of the other modes of service herein prescribed is 
practicable, by publication in the Official Gazette ; and such notice 
shall, with sworn proof of the fact, time, and mode of service 
thereof, be attached to the deposition or depositions, whether the 
opposing party shall have cross-examined or not. 

(3.) Each witness before testifying shall be duly sworn ac- 
cording to law by the officer before whom his deposition shall be 
taken. The depositions shall be carefully read over by the witness, 
or by the officer in his hearing, and shall then be subscribed by 
the witness, in the presence of the officer. The officer shall annex 
to the deposition his certificate showing (1) the due administration 
of the oath by the officer to the witness before the commencement 
of his testimony; (2) the name of the person by whom the testi- 
mony was written out, and the fact that, if not written by the 
officer, it was written in his presence; (3) the presence or absence 
of the adverse party; (4) the place, day and hour of commencing 
and taking the depositions; and (5) the fact that the officer was 
not connected, by blood or marriage, with either of the parties, nor 
interested directly or indirectly in the matter in controversy. The 
officer shall sign the certificate and affix thereto his seal of office, 
if he have such seal. He shall then, without delay, securely seal 
up all the evidence, notices, and paper exhibits, inscribe upon the 
envelope a certificate, giving the title of the case, the name of each 
witness and the date of sealing, address the package, and forward 
the same to the commissioner of patents. If the weight or bulk 
of an exhibit shall exclude it from the envelope, it shall be 
authenticated by the officer and transmitted in a separate package, 
marked and addressed as above provided. 

(4.) In cases of extension, where no opposition shall be made, 
ex parte testimony will be received from the applicant ; and such 
testimony as may have been taken by the applicant prior to notice 
of opposition will be received, unless taken within thirty days after 
filing the petition for the extension. But upon receiving notice of 
opposition, the applicant shall immediately give notice to the op- 
posing party or parties of the names and residences of the wit- 
nesses whose testimony shall have been thus taken. 

(5.) If either party shall be unable to procure the testimony 
of a witness within the time limited, any motion which he may 
make for an extension of his time must be accompanied by a 
statement, under oath, of the cause of such inability, the name of 
such witness, the facts expected to be proved by him, the steps 
which have been taken to procure said testimony, and the dates 
at which efforts have been made to procure it. (See Rule 149.) 



Eule 151 APPENDIX OF EULES OF '79. 844 



(6.) When a party relies upon a caveat to establish the date 
of his invention, the caveat itself, or a certified copy thereof, must 
be filed in evidence, with due notice to the opposite party. 

(7.) Upon notice given to the opposite party before the closing 
of the testimony, any official record, and any special matter con- 
tained in a printed publication, if competent evidence and pertinent 
to the issue, may be used as evidence at the hearing. 

151. The pages of each deposition must be numbered consecu- 
tively and the name of the witness plainly and conspicuously 
written at the top of each page. The testimony must be taken 
upon legal-cap or foolscap paper, with a wide margin on the left- 
hand side of the page, and with the writing on one side only of 
the sheet. 

152. The testimony will be taken in answer to interrogatories, 
with the questions and answers committed to writing in their regu- 
lar order by the officer, or, in his presence, by some person not 
interested in the case, either as a party thereto or as attorney. 
But, with the written consent of the parties, the depositions may 
be written out by other persons in the presence of the officer. No 
officer who is connected by blood or marriage with -either of the 
parties, or interested, directly or indirectly, in the matter in con- 
troversy, either as counsel, attorney, agent, or otherwise, is com- 
petent to take depositions, unless with the written consent of all 
the parties. 

153. By leave of the commissioner, first obtained, testimony 
may be taken in foreign countries : 

(1.) Such permission will be granted only upon motion duly 
made. (See Rule 149.) 

The motion must designate a place for the examination of the 
witnesses at which an officer duly qualified to take testimony under 
the laws of the United States in a foreign country shall reside, 
and it must be accompanied by a statement, under oath, that the 
motion is made in good "faith, and not for purposes of delay or of 
vexing or harassing any party to the case; it must also set forth 
the names of the witnesses, the particular facts to which it is 
expected each will testify, and the grounds on which is based the 
belief that each will so testify. 

(2.) It must appear that the testimony desired is material and 
competent, and that it cannot be taken in this country at all, or 
cannot be taken here without hardship and injury to the moving 
party greatly exceeding that to which the opposite party will be 
exposed by the taking of such testimony abroad. 

(3.) Upon the granting of such motion, a time will be set 
within which the moving party shall file in duplicate the interroga- 
tories to be propounded to each witness and serve a copy of the 
same upon each adverse party, who may, within a designated time, 
fi/le, in duplicate, cross-interrogatories. Objections to any of the 
interrogatories or cross-interrogatories may be filed at any time 
before the depositions are taken, and will be considered and deter- 
mined upon the hearing of the case. 

(4.) As soon as the interrogatories and cross-interrogatories 
are decided to be in proper form, the commissioner will cause 
them to be forwarded to the proper officer, with the request that, 
upon payment of, or satisfactory security for, his official fees, he 
notify the witnesses named to appear before him within a designated 
time and make answer thereto under oath ; and that he reduce 
their answers in writing, and transmit the same, under his official 



845 ISSUE. Rule 159 



seal and signature, to the commissioner of patents, with the certifi- 
cate prescribed in Rule 150 (3). 

(5.) By stipulation of the parties the requirements of para- 
graph (3) as to written interrogatories and cross-interrogatories 
ma\' be dispensed with, and the testimony may be taken before the 
proper officer upon oral interrogatories by the parties or their 
agents. 

(6.) Unless false swearing in the giving of such testimony 
before the officer taking it shall be punishable as perjury, under 
the laws of the foreign state where it shall be taken, it will not 
stand on the same footing, in the patent office, as testimony duly 
taken in the United States ; but its weight in each case will be 
determined by the tribunal having jurisdiction of such case. 

154. No evidence touching the matter at issue will be considered 
on the hearing which shall not have been taken and filed in com- 
pliance with these rules. But no notice will be taken of any merely 
formal or technical objection which shall not appear to have wrought 
a substantial injurj^ to the party raising it ; and in case of such 
injury it must be made to appear that, as soon as the party became 
aware of the ground of objection, he gave notice thereof to the 
office, and also to the opposite party, informing him at the same 
time that, unless it should be removed, he should urge his objection 
at the hearing. 

This rule is not to be so construed as to modify established 
rules of evidence, which will be applied strictly in all practice 
before the office. 

155. The law requires the clerks of the various courts of the 
United States to issue subpoenas to secure the attendance of wit- 
nesses whose depositions are desired as evidence in contested cases 
in the patent office. 

156. After testimony is (filed in the office it may be inspected 
by any part}' to the case, but it cannot be withdrawn for the pur- 
pose of printing. It may be printed by some one specially desig- 
nated by the office for that purpose, under proper restrictions. 

157. Six or more printed copies of the testimony must be fur- 
nished — five for the use of the office, and one for the use of 
each of the opposing parties. These copies must be filed not less 
than one week before the day of hearing. They will have wide 
margins, with the names of the witnesses at the top of the pages 
over their testimony, and will contain indexes with the names of 
all witnesses, and references to the pages where their testimony 
may be found, and also to the pages where copies of papers and 
documents introduced as exhibits are shown. Printing can only be 
dispensed with on special application based upon satisfactory^ rea- 
sons, in which case manuscript copies must be furnished — one for 
the office and one for each adverse party. 

158. It is desirable that arguments and briefs in all contested 
cases should be submitted in printed form, and filed before the 
hearing. If either party fail to comply with this regulation no 
extension of time will be granted for the purpose, except upon con- 
sent of the adverse parties. 

ISSUE 

159. If on examination, it shall appear that the applicant is 
justly entitled to a patent under the law, a notice of allowance will 
be sent him, calling for the payment of the final fee, upon the 



Eule 160 APPENDIX OF RULES OF '79. 846 



receipt of which, within the time 'fixed by law, the patent will be 
prepared for issue. (See Rules 212, 213.) 

160. After notice of the allowance of an application is given 
the case will not be withdrawn from issue except by approval of 
the commissioner, and if withdrawn for further action on the part 
of the office, a new notice of allowance will be given. (See Rule 

n.) 

DATE, DURATION, AND FORM OF PATENTS 

161. Every patent will bear date as of a day not later than six 
months from the time at which the application was passed and 
allowed and notice thereof was mailed to the applicant or his 
agent, if within that period the ifinal fee be paid to the com- 
missioner of patents, or if it be paid to the treasurer, or any 
of the assistant treasurers or designated depositaries of the 
United States and the certificate promptly forwarded to the com- 
missioner of patents ; and if the final fee be not paid within that 
period the patent will be withheld. (See Rule 169.) . 

A patent will not be antedated. 

162. Every patent will contain a short title of the invention or 
discovery, indicating its nature and object, and a grant to the 
patentee, his heirs and assigns, for the term of seventeen years, 
of the exclusive right to make, use, and vend the invention or dis- 
covery throughout the United States and the Territories thereof. 
But if the invention shall have been previously patented abroad, 
the term of the patent will expire with the term of the foreign 
patent. The duration of a design patent may be for the term of 
three and a half, seven, or fourteen years, as provided in Rule 79. 
A copy of the specification and drawings will be annexed to the 
patent and form part thereof. 

DELIVERY 

163. The patent will be delivered or mailed, on the day of its 
date, to the patentee, unless there be an attorney of record, in 
which case it will be delivered to him or the patentee, as the 
attorney may request ; but it will not, without a special request to 
that effect, be delivered to an associate or substitute attorney. 

CORRECTION OF ERRORS IN LETTERS PATENT 

164. Where a mistake, incurred through the fault of the office, 
is clearly disclosed by the records or files of the office, a certifi- 
cate, showing the fact and nature of such mistake, signed by the 
secretary of the interior, countersigned by the commissioner of 
patents, and sealed with the seal of the patent office, will, at the 
request of the patentee or his assignee, be indorsed without charge 
upon the letters patent, and recorded in the records of patents, 
and a printed copy thereof attached to each printed copy of the 
specification and drawings. 

Where a mistake, incurred through the fault of the office, con- 
stitutes a sufficient legal ground for a reissue, such reissue will be 
made, for the correction of such mistake only, without charge of 
office fees, at the request of the patentee. 

Mistakes not incurred through the fault of the office and not 



847 ABANDONED APPLICATION. Rule 171 



affording legal grounds for reissues, will not be corrected after the 
deliver}' of the letters patent to the patentee or his agent. 

No changes or corrections will be made in letters patent after 
the delivery thereof to the patentee or his agent, except as above 
provided. 

ABAXDONED, FORFEITED, AND RENEWED APPLICATIONS 

165. An abandoned application is one which has not been com- 
pleted and prepared for examination within two 3'ears after the 
filing of the petition, or which the applicant has failed to prosecute 
within two years after any action therein, of which notice has been 
duly given (see Rules 31 and 76), of which the applicant has ex- 
pressly abandoned by filing, in the office, a written declaration of 
abandonment, signed by himself, identifying his application by 
title of invention and date of filing. (See Rule 59.) 

Prosecution of an application, to save it from abandonment, must 
include such proper action as the condition of the case may re- 
quire. 

166. Before an application abandoned by failure to complete or 
prosecute can be renewed, it must be shown to the satisfaction of 
the commissioner that the delay in the prosecution of the same was 
unavoidable. 

167. When a new application is filed in place of an abandoned 
or rejected application, a new specification, oath, drawing, and fee 
will be required, but the old model, if suitable, may be used. 

168. A forfeited application is one upon which a patent has 
been withheld for failure to pay the (final fee within the prescribed 
time. (See Rule 161.) 

169. Where the patent has been withheld by reason of non- 
payment of the final fee, any person, whether inventor or assignee, 
who has an interest in the invention for which such patent was 
ordered to issue, may file a new application for the same invention ; 
but such second application must be made within two years after 
the allowance of the original application. Upon the hearing of 
such new application abandonment will be considered as a question 
of fact. 

170. In such renewal the oath, petition, specification, drawing, 
and model of the original application may be used for the second 
application, but a new fee will be required. The second applica- 
tion will not be regarded as a continuation of the original one, 
but will bear date from the time of renewal, and be subject to 
examination like an original application. 

171. Forfeited and abandoned applications will not be cited as 
references. But when an applicant makes claim to an invention 
previousl}^ claimed by and allowed to another, whose application 
has become forfeited by reason of the non-payment of the final fee 
within six months from the date of the letter of allowance, he will 
be notified that unless he shall file an affidavit, showing that he 
made the invention before such previously allowed application 
was filed, his own application will not be passed to issue. 

Where more than one such subsequent applicant claims the 
invention thus previously allowed, each will be i-equired to file 
the affidavit above mentioned within a reasonable specified time, 
before an interference can be declared between such later applica- 
tions. 

No notice will be given to applicants, while their cases remain 



Eule 172 APPENDIX OF EXILES OF '79. 848 



forfeited, of the filing of subsequent applications. Certified copies 
of the file in cases of rejected and abandoned applications may be 
furnished to applicants or to other persons when specifically ordered, 
but no inspection of such file, except by the applicants or their duly 
authorized attorneys, will be permitted. 

EXTENSIONS 

172. No patent granted since March 2, 1861, can be extended 
except by act of congress. 

173. When a patent has been so extended, subject to the 
further decision of the commissioner, the subsequent proceedings 
will be conducted in accordance with the following rules. 

174. Any person may oppose an application for extension, but 
must give notice of such opposition to the applicant or his attorney 
of record within the time hereinafter named, and furnish him with 
a statement of his reasons of opposition. After such notice he 
will be regarded as a party in the case, and will be entitled to 
notice of the time and place of taking testimony, to a list of the 
names and residences of the witnesses whose testimony may have 
been taken before service bf his notice of opposition, and to a 
copy of the application and of any other papers on file, upon 
payment of the cost thereof. He must also immediately ifile a copy 
of such notice and reasons of opposition, with proof of service of 
the same, in the patent office. 

175. If the extension is opposed on the ground of lack of novelty 
in the invention, the reasons of opposition must contain a specific 
statement of any and all matter relied upon for this purpose. 

176. The applicant for an extension must furnish to the office 
a statement in writing, under oath, of the ascertained value of the 
invention, and of his receipts and expenditures on account thereof, 
both in this and in foreign countries. This statement must be 
detailed and particular, unless sufficient reasons are shown for a 
failure to make it so. lit must in all cases be filed with the 
petition. 

177. Such statement must also be accompanied with a certified 
abstract of title and a declaration under oath, setting forth the 
extent of the applicant's interest in the extension sought. 

178. The questions which arise on each application for an 
extension are : 

(1.) Was the invention new and useful when patented? 

(2.) Is it valuable and important to the public, and to what 
•extent ? 

(3.) Has the inventor been reasonablj^ remunerated for the 
time, ingenuity, and expense bestowed upon the invention, and 
upon its introduction into use? If not, has his failure to be so 
remunerated arisen from neglect or fault on his part? 

(4.) What will be the effect of the proposed extension upon 
the public interests? 

179. No proof will be required from the applicant upon the first 
question unless the invention is assailed upon those points by op- 
ponents. 

180. To enable the commissioner to come to a correct conclusion 
in regard to the second point of inquiry, the applicant must, if 
possible, present the testimony of disinterested persons taken under 
oath. This testimony must distinguish carefully between the 



849 DISCLAIMERS. Rule 187 



specific devices covered by the claims of the patent and the general 
machine in which those devices may be incorporated. 

181. Upon the third point of inquiry the applicant, having by 
his own oath shown his receipts and expenditures on account of 
the invention, must also show, by testimony under oath, that he has 
taken all reasonable measures to introduce his invention into 
general use ; and that without neglect or fault on his part, he has 
failed to obtain from the use and sale of the invention a reasonable 
remuneration for the time, ingenuity, and expense bestowed on the 
same, and on its introduction into use. 

182. In case of opposition to the extension of a patent both 
parties may take testimony, each giving reasonable notice to the 
other of the time and place of taking the same. The testimony 
will be taken according to the rules hereinafter prescribed. 

183. Any person desiring to oppose an extension must serve his 
notice of opposition, and file his reasons therefor, at least ten 
days before the day fixed for the closing of the testimony ; but 
parties who have not entered formal opposition in time to put in 
testimony may, at the discretion of the commissioner, be permitted 
to appear on the day of hearing, and make argument upon the 
record in opposition to the grant of the extension. In such case 
good cause for the neglect to make formal opposition must be shown. 

184. In contested cases no testimony will be received, unless by 
consent, which has been taken within thirty days next after the 
filing of the petition for the extension. 

185. Service of notice to take testimony must be made as pro- 
vided for in Rule 150 (2). Where notice to take testimony has 
already been given to an opponent, and a new opponent subse- 
quently gives notice of his intention to oppose, the examination need 
not be postponed, but notice thereof may be given to such subse- 
quent opponent by mail or by telegraph. But this rule does not 
apply to ex parte examinations, nor to those of which no notice 
is given before service of notice of opposition. 

186. In the notice of application for extension a day will be 
fixed for the closing of testimony, and the day of hearing will 
also be named. Applications for postponement of the day of hearing, 
or for further time for taking testimony, must be made and sup- 
ported in accordance with the rules to be observed in other con- 
tested cases ; but no postponement will be granted whereby any risk 
of delaying the decision until the expiration of the patent may be 
incurred. Upon the closing of the testimony the application will 
be referred without delay to the examiner in charge of the class 
to v/hich the invention belongs for the report required by law ; and 
such report shall be made not less than five days before the day 
of hearing. As this report is intended for the information of the 
commissioner, neither the parties nor their attorneys will be per- 
mitted to make oral arguments before the examiner. In contested 
cases briefs are deemed desirable, and these should always be ifiled 
at least five days before, the day of hearing. 

DISCLAIMERS 

187. Whenever, through inadvertence, accident, or mistake, and 
without any fraudulent or deceptive intention, a patentee has 
claimed more than that of which he was the original or first in- 
ventor or discoverer, his patent shall be valid for all that part 
which is truly and justly his own, provided the same is a material 



Rule 188 APPENDIX OP eules op '79. 850 

or substantial part of the thing patented; and any such patentee, 
his heirs or assigns, whether of the whole or any sectional interest 
therein, may, on payment of the fee required by law, make dis- 
claimer of such parts of the thing patented as he or they shall not 
choose to claim or to hold by virtue of the patent or assignment, 
stating therein the extent of his interest in such patent. Such 
disclaimer shall be in writing, attested by one or more witnesses, 
and recorded in the patent office ; and it shall thereafter be con- 
sidered as part of the original specification to the extent of the 
interest possessed by the claimant and by those claiming under 
him after the record thereof. But no such disclaimer shall affect 
any action pending at the time of filing the same, except as to the 
question of unreasonable neglect or delay in ifiling it. 

188. Such disclaimers must be distinguished from those which 
are embodied in original or reissue applications, as at 'first filed or 
subsequently amended, referring to matter shown or described, but 
to which the disclaimant does not choose to claim title, and also 
from those made to avoid the continuance of interferences, which 
require no fee, but must, like all other disclaimers, be signed by 
the applicants in person and duly witnessed. (See Rule 104. For 
Forms of Disclaimers see Appendix Forms 21, 28.) 

CAVEATS 

189. A caveat, under the patent law, is a notice given to the 
office of the caveator's claim as inventor, in order to prevent the 
grant of a patent to another for the same alleged invention upon 
an application fisled during the life of the caveat without notice to 
the caveator. 

190. Any citizen of the United States who has made a new 
invention or discovery and desires further time to mature the same, 
may, on payment of a fee of ten dollars, file in the patent office a 
caveat setting forth the object and the distinguishing characteristics 
of the invention, and praying protection of his right until he 
shall have matured his invention. Such caveat shall be filed in 
the confidential archives of the office and preserved in secrecy, 
and shall be operative for the term of one year from the filing 
thereof. 

191. An alien has the same privilege, if he has resided in the 
United States one year next preceding the filing of his caveat, and 
has made oath of his intention to become a citizen. 

192. The caveat must comprise a specification, oath, and, when 
the nature of the case admits of it, a drawing, and, like the ap- 
plication, must be limited to a single invention or improvement. 

193. The same particularity of description is not required in a 
caveat as in an application for a patent ; but the caveat must 
set forth the object of the invention and the distinguishing 
characteristics thereof, and it should be sufficiently precise to 
enable the office to judge whether there is ' a probable interference 
when a subsequent application is filed. If upon examination a 
caveat be found defective in this respect amendment will be re- 
quired. Without compliance with Rules 190, 192, 193 and 195 the . 
caveator will not be entitled to the notice provided for in Rule 196. 

194. The oath of the caveator must set forth that he is a 
citizen of the United States, or, if he be an alien, that he has 
resided for one year last past within the United States, and has 



851 ASSIGNMENTS. Rule 202 



made oath of his intention to become a citizen thereof, and that he 
beheves himself the original and first inventor of the art, machine, 
or improvement set forth in his caveat. 

195. When practicable, the caveat should be accompanied by full 
and accurate drawings, separate from the speciification, well executed 
on tracing muslin or paper that may be folded. (See Rule 50.) 

196. If at any time within one year after the filing or renewal 
of a caveat another person shall file an application with which such 
caveat would in any manner interfere, and if, within the year, the 
application shall be found patentable, then such application will be 
suspended, and notice thereof will be sent to the person filing the 
caveat, who, if he shall file a complete application within the pre- 
scribed time, will be entitled to an interference with the previous 
application, for the purpose of proving priority of invention, and 
obtaining the patent, if he be adjudged the prior inventor. The 
caveator, if he would avail himself of his caveat, must file his 
application within three months from the expiration of the time 
regularly required for the transmission to him of the notice 
deposited in the post-office at Washington ; and the day when the 
time for ifiling expires will be mentioned in the notice or indorsed 
thereon. 

197. The caveator will not be entitled to notice of any applica- 
tion pending at the time of filing his caveat, nor of any applica- 
tion filed after the expiration of one year from the date of the 
filing or renewal thereof. The caveat may be renewed by the pay- 
ment of a second caveat fee of ten dollars, and it will continue 
in force for one year from the date of the payment of such second 
fee, and so on from year to year for not more than two years. If 
a caveat be not renewed, it will still be preserved in the secret 
archives of the offxe. 

198. A caveat confers no rights and affords no protection ex- 
cept as to notice of an interfering application filed during its 
life, giving the caveator the opportunity of proving priority of 
invention if he so desires. It may be used as evidence in contests, 
as provided in Rule 150 (61^ 

199. There is no provision of law making the caveat assignable, 
although the alleged invention therein set forth is assignable, and 
the caveat may be used as means of identifying the invention 
transferred in an assignment. 

200. Caveat papers cannot be withdrawn from the office after 
they have once been ifiled ; but copies of the papers may be ob- 
tained at the usual rates by the caveator or any person duly 
authorized by him. Additional papers, if containing new matter, 
must be filed as a separate caveat with another fee. (For Caveat 
Forms see Appendix, Forms 10, 16.) 

ASSIGXMEXTS 

201. Every patent or any interest therein shall be assignable in 
law by an instrument in writing; and the patentee or his assigns 
or legal representatives may, in like manner, grant and convey an 
exclusive right under his patent to the whole or any specified part 
of the United States. 

202. Interests in pate.nts may he vested in assignees, in grantees 
of exclusive sectional rights and mortgagees, and in licenses. 

(1.) An assignee is a transferee of the whole interest of the 



Rule 203 APPENDIX or eules of '79. 852 



original patent, or of an undivided part of such whole interest, 
extending to every portion of the United States. The assignment 
must be written or printed and duly signed. 

(2.) A grantee acquires by the grant the exclusive right, under 
the patent, to make and use, and to grant to others the right to 
make and use, the thing patented, within and throughout some 
specified part of the United States, excluding the patentee there- 
from. The grant must be written or printed and duly signed. 

(3.) A mortgage must be written or printed and duly signed. 

(4.) A licensee takes an interest less than or different from 
either of the others. A license may be oral, or written or printed 
and duly signed. 

203. An assignment, grant, or conveyance will be void as 
against any subsequent purchaser or mortgagee for a valuable con- 
sideration, without notice, unless recorded in the patent office within 
three months from the date thereof. 

204. No instrument will be recorded which does not, in the 
judgment of the commissioner, amount to an assignment, grant, 
mortgage, lien, encumbrance, or license, or affect the title of the 
patent or invention to which it relates. 

205. Assignments which are made conditional on the per- 
formance of certain stipulations, as the payment of money, if re- 
corded in the office, are regarded as absolute assignments, until 
canceled with the written consent of both parties, or by the decree 
of a competent court. The office has no means of determining 
whether such conditions have been fulfilled. 

206. In every case where it is desired that the patent shall 
issue to an assignee, the assignment must be recorded in the patent 
office at a date not later than the day on which the final fee is 
paid. The date of the record is the date of the receipt of the 
assignment at the office. 

207. The receipt of assignments is not generally acknowledged 
by the office. They are recorded in regular order as promptly as 
possible and then transmitted to the persons entitled to them. 
(For Form of Assignment see Appendix, Forms 37-42.) 

OFFICE FEES 

208. Nearly all the fees payable to the patent office are posi- 
tively required by law to be paid in advance — that is, upon making 
application for any action by the office for which a fee is payable. 
For the sake of uniformity and convenience, the remaining fees 
will be required to be paid in the same manner. 

209. The following is the schedule of fees : 

On ifiling every application for a design patent. $10.00 

On issuing a design patent for three years and six months no 

further charge. 

On issuing a design patent for seven years 5.00 

On issuing a design patent for fourteen years 20.00 

On 'filing every caveat 10.00 

On filing every application for a patent for an invention or 

discovery 15.00 

On issuing each original patent for an invention or discovery. 20.00 

On filling a disclaimer 10.00 

On filing every application for a reissue 30.00 

On filing every application for a division of a reissue 30.00 



853 OFFICE FEES. . Eule 209 



On ifiling every application for an extension.... 50.00 

On the grant of every extension 50.00 

On tiling an appeal from a primarv examiner to the examin- 
ers-in-chief ' 10.00 

On filing an appeal to the commissioner from the examiners- 
in-chief 20.00 

For certified copies of patents or other instruments, except 
copies of printed patents sold bv the office, for every 

100 words. '. 10 

For certified copies of printed patents sold b}' the office, 10 
cents for every 100 words, less the price actually paid 
for such copies without certification. 
P"or certified copies of drawings, the reasonable cost of mak- 
ing them. 

For recording an assignment of 300 words or less 1.00 

For recording an assignment of more than 300 and not more 

than 1.000 words 2.00 

For recording every assignment of more than 1,000 words.... 3.00 
For uncertified copies of the specifications and accompanying 
drawings of all patents which are in print : 

Single copies 25 

Twenty copies or more whether of one or several patents, 

per copy* 10 

For uncertified copies of the specifications and drawings of 
patents, not in print, the reasonable cost of making 
the same. 
For copies of matter in anj' foreign language, per 100 words.. 20 

For translations, per 100 words 50 

For assistance to attorneys in examination of records one 

hour or less 50 

Each additional hour 50 

210. An order for a copy of an assignment must give the liber 
and page of the record, as well as the name of the inventor; 
otherwise an extra charge will be made for the time consumed in 
making an\" search for such assignment. 

211. Xo person will be allowed to make copies or tracings from 
the files or records of the office. Such copies will be furnished, 
when ordered, at the rates already speciified. 

212. The money required for office fees may be paid to the 
commissioner, or to the treasurer, or any of the assistant treasurers 
of the United States, or to any of the designated depositaries, 
national banks, or receivers of public money, designated by the 
secretary of the treasury for that purpose, who shall give the 



*Xote. — For the convenience of the office and of persons desiring 
printed copies of specifix;ations and drawings, blank orders, or 
"coupons"', have been prepared, which will be sold, on application 
to the chief clerk, at the rate of 10 cents each, in lots of 20 or more. 
Stub-books, containing 50 or 100 such orders, can be furnished at 
the same rate, and the orders printed on postal cards at the same 
rate plus the cost of the cards. 

These orders, whenever presented properly filled up, are good 
for one copy each of the specification and drawings of any United 
States patent issue since November 20. 1866, or for a copy of the 
drawing of any United States patent from the earliest dates. 
Prior to the date given, the specifications were not printed. 



Eule 213 APPENDIX OF KULES OF '79. 854 



depositor a receipt or certificate of deposit therefor, which shall 
be transmitted to the patent office. When this cannot be done 
without much fnconvenience, the money may be remitted by mail, 
and in every such case the letter should state the exact amount 
inclosed. Letters containing money may be registered. Post-office 
money-orders now afford a safe and convenient mode of trans- 
mitting fees. All such orders should be made payable to the "Com- 
missioner of Patents." 

213. The weekly issue will close on Thursday, and the patents 
of that issue will bear date as of the third Tuesday thereafter. If 
the final fee in any application is not paid on or before that day, 
the patent will not go to issue until the following week. 

214. All money sent by mail, either to or from the patent office, 
will be sent at the risk of the sender. In no case should money be 
sent inclosed with models. All payments to or by the office must 
be made in "specie, treasury notes, national-bank notes, certificates 
of deposit, or post-office money-orders. 

REPAYMENT OF MONEY 

215. Money paid b}^ actual mistake, such as a payment in excess, 
or when not required by law, or by neglect or misinformation on 
the part of the office, will be refunded; but a mere change of 
purpose after the payment of money, as when a party desires to 
withdraw his application for a patent, or for the registration of a 
trade-mark, or an appeal, will not entitle a party to demand such 
a return. 

PUBLICATION 

216. The "Official Gazette," a weekly publication which has been 
issued since 1872, takes the place of the old "Patent-Office Report." 
It contains the claims of all patents issued, including reissues, 
with portions of the drawings selected to illustrate the claims, 
and also lists of designs patents, together with decisions of the 
courts and of the commissioner, and other special matters of interest 
to inventors. 

The Gazette is furnished to subscribers at the rate of $6 per 
annum. When it is sent abroad an additional charge of $2 will 
be made for the payment of postage. But representatives and 
senators are each entitled to designate eight public libraries to 
which it will be sent without charge. Single copies are furnished 
for 15 cents each. 

An index is published annually, which is sent to all subscribers 
and designated libraries without additional cost. 

Printed volumes are issued monthly, containing the entire 
specifications and drawings of all patents issued during the previous 
month. These are authenticated by the seal of the office and maj' 
be used as evidence throughout the United States. One copy is 
deposited m each State library, and one copy in the custody of the 
clerk of each United States district court, for general reference. 

217. No persons are allowed to enter the alcoves, or take books 
from the library, except officers of the bureau and members of the 
examining corps. 

All books taken from the library must be entered in a register 
kept for the purpose, and returned on the call of the librarian. 



855 AMENDMENTS OF RULES. Rule 218 



Any book lost or defaced must be replaced by a copy of the same. 

Patentees and others doing business with the office can examine 
ihe books only in the library-hall. 

Translations will be made only for official use. 

Persons will be allowed to make notes or extracts, but not 
copies or tracings, from works in the library. Such copies will be 
furnished at the usual rates. 

AMENDMENTS OF THE RULES 

218. A.ll amendments of the foregoing rules will be published 
in the Official Gazette. 

H. E. PAINE, 
Commissioner of Patents. 
Approved : 

C. SCHURZ, 
Secretary of the Interior. 



INDEX 



ABANDONED, FORFEITED, REVIVED, AND RENEWED AP- 
PLICATIONS 

(See Abandonment, Forfeiture, and Renewal.) 
ABANDONMENT 

of application by failure to complete — Rules 31, 171. 
by failure to prosecute — Rules 31, 77, 171. 
by intent of applicant — Rule 171. 
considered, upon renewal of application — Rule 175. 
ADMINISTRATORS AND EXECUTORS 

may make application — Rules 25, 26. 

will make oath — Rules 25, 26. 

patent may issue to — Rules 25, 26. 
ADVERSE DECISION 

upon preliminary questions — Rules 65, 67, 69. 
AFFIDAVITS 

to overcome references on rejection — Rules 66, 75. 

in support of application for reissue — Rule 87. 

to establish priority of invention — Rules 94, 110. 

after appeal — Rule 141. 
AMENDMENTS 

right to amend — Rule 68. 

requisites of — Rules 68, 73, 74. 

to be signed both by inventor and assignee of undivided interest — 
Rules 6, 73. 

must be written legibly on but one side of the paper — Rule 45. 

on sheets of paper separate from the original — Rule 73. 

erasures and insertions — Rule 73. 

to correspond to original model, drawing, or specification — Rule 70. 

involving a departure from original invention not permitted — 
Rule 70. 

not covered by original oath — Rule 48. 

of specification, if no model or drawing — Rules 48, 70. 

to correct inaccuracies or prolixity — Rule 71. 

after claims are ready for appeal — Rule 68. 

after decision on appeal, based on discovery of Commissioner — 
Rule 139. 

after notice of allowance — Rules 78, 165, 166. 

to applications in interference — Rules 106, 107, 109. 

to drawings — Rule 71. 

to preliminary statements — Rules 112, 113. 

to save from abandonment — Rule 171. 

to reissues — Rule 88. 

to Rules of Practice, to be published in Official Gazette — Rule 198. 
APPEALS 

from requirement of model — Rule 56. 

to examiners-in-chief from primary examiner on merits of invention 
—Rule 133. 

857 



858 INDEX. 



APPEALS— Continued, 
to be in writing — Rule 133. 
prerequisites to — Rule 134. 
examiner to furnish a statement of the grounds of rejection — 

Rule 135. 
appellant to furnish a brief of reasons of appeal — Rule 137. 
oral hearing before examiners-in-chief, how obtained — Rule 137. 

how conducted — Rule 138. 
decision of examiners-in-chief to be confined to points appealed — 

Rule 139. 
but upon discovery of grounds for granting or refusing a patent 

not involved in appeal, action — Rule 139. 
to examiners-in-chief from examiner, interference cases, patenta- 
bility of claims— Rules 124, 143. 
to Commissioner upon refusal of examiner to admit amendment — 

Rule 68. 
upon objection that the appeal is informal — Rule 135. 
on preliminary or intermediate questions from examiner — Rule 142. 
to Commissioner in interference cases — Rules 124, 143. 

upon adverse decisions by examiners-in-chief — Rule 139. 
rehearings — Rule 140. 
jurisdiction — Rule 140. 
reconsideration of cases decided by a former Commissioner — 

Rule 147. 
to the Court of Appeals of the District of Columbia — Rules 148, 

149, 150. 

APPLICANTS. (See Applications.) 
who may be — Rule 24. 

should transact their business in writing — Rule 4. 
personal attendance unnecessary — Rule 4. 

required to conduct business with decorum and courtesy — Rule 22. 
will be informed of serial number of their application — Rule 31. 

APPLICATIONS 

what constitutes a complete application — Rule 30. 
to whom made — Rule 30. 

may be made by guardian of insane person — Rule 25. 
must be made by actual inventor, if alive — Rule 26. 

if dead, by executor or administrator — Rules 25, 26. 
must be written in the English language — Rule 30. 
must be filed within twelve months after foreign application — 

Rule 24. 
how signed and witnessed — Rule 40. 
office can not advise or assist in preparation of — Rule 14. 
all parts should be filed at the same time — Rule 32. 
incomplete applications will not be filed — Rule 31. 
acknowledgement of filing — Rule 77. 
will be stricken from the files for irregularities — Rule 31. 
will be numbered in regular series, commencing January 1, 1900 — 

Rule 31. 
to contain but one invention unless connected — Rules 41, 42. 
when applicant makes two or more, covering same invention, cross 

references required — Rule 43. 
reservation for future application not permitted — Rule 44. 
data required in letters concerning — Rule 10. 
oath to, by applicant — Rule 46. 
by applicant for reissue — Rule 87. 



INDEX. 859 



APPLICATIONS— Continued. 

by executor or administrator — Rule 47. 

by guardian of insane person — Rule 47. 

supplemental to amendment — Rule 48. 

before whom taken— Rule 47. 
kept secret while pending — Rule 15. 
when patented are open for inspection — Rule 16. 
examination. of, order of— Rule 63. 

privileged cases taking precedence in — Rule 63. 

delayed, if model is condemned — Rule 58. 

suspended by request — Rule 77. 
in reissue cases, by whom signed — Rule 85. 

what must accompany — Rule 86. 

no new matter to be introduced — Rule 88. 

division of — Rule 89. 

original will be reviewed — Rule 90. 
abandonment of, by failure to complete — Rules 31-, 171. 

by failure to prosecute — Rules 31, 77, 171. 

by filing a formal abandonment — Rules 60, 171. 
abandoned and forfeited, not cited as references — Rule 177. 

copies, to whom furnished — Rule 179. 
prosecution of, defied — Rules 77, 171. 
renewal of, after abandonment — Rule 172. 

after forfeiture — Rules 175, 176. 
new, after abandonment may be accompanied by old model — 
Rule 173. 

after forfeiture may be made by any party in interest — Rule 165. 

but within two years — Rule 175. 
old papers may be used in renewal after forfeiture — Rule 176. 
new, may be made for claims not in interference — Rule 106. 
rejected, certified copies of, to whom furnished — Rule 179. 
rejected, may be appealed to examiners-in-chief after two rejec- 
tions—Rule 133. 
rules governing, filed prior to January, 1898 — Rule 200. 

aJiguments 

oral, hours of hearing — Rule 151. 
limitation of — Rule 151. 

right to open and close in contested cases — Rule 153. 
brief of, to be made in appeal cases, to be previously filed — Rule 137. 

interference cases, to be previously filed — Rule 144. 
in contested cases should be printed — Rule 163. 
ASSIGNEE 

if of entire interest, is entitled to hold correspondence with the 
office exclusively — Rules 5, 20. 
and patent may issue to him — Rule 26. 
if of undivided part interest, correspondence will be held with in- 
ventor — Rule 6. 
and patent may issue jointly — Rule 26. 
may make application for reissue of patent — Rule 85. 
may prosecute or defend in interference — Rule 131. 
may file application for renewal after forfeiture — Rule 175. 
patent will issue to, if assignment is recorded before payment 
of final fee— Rule 188. 
ASSIGNMENTS 

assignability of patents — Rule 183. 
grant of territoral rights — Rule 183. 



860 INDEX. 



ASSIGNMENTS— Continued. 

in whom may be vested — Rule 184. 
assignees — Rule 184 (a). 
grantees — Rule 184 (b). 
mortgages — Rule 184 (c). 
licenses — Rule 184 (d). 
must be recorded in United States Patent Office to secure against 

subsequent conveyance — Rule 185. 
acknowledgment before notary, prima facie evidence — Rule 185. 
what will be accepted for record — Rule 186. 
should identify the patent — -Rule 186. 
conditional assignments — Rule 187. 
if recorded before payment of final fee patent will issue to assignee 

—Rules 26, 188. 
date of receipt is date of record — Rule 188. 
receipt of, acknowledged — Rule 189. 
recorded in regular order and returned — Rule 189. 
fees for recording — ^Rule 190. 

copies of — Rule 190. 
orders for copies of, must give liber and page — Rule 192. 
ATTORNEYS— Rule 17. 
who may act as — Rule 17. 
advised to employ — Rule 17. 
office can not aid in selection — Rule 17. 
correspondence to be with them only — Rule 7. 

power of attorney must be ffied before any recognition or privileges 
are extended — ^Rule 18. 
given to a firm not recognized unless all its members are named 
therein — Rule 18. 
general powers not recognized — Rule 18. 
substitution or association of, when authorized by principal — 

Rule 19. 
if not satisfactory, power may be revoked — Rule 20. 
assignments do not operate as a revocation — Rule 20. 
may examine cases in attorney's rooms, but not in rooms of the 

examiners — Rule 21. 
personal interviews with examiners — Rules 13, 21, 152. 
required to conduct business with decorum and courtesy — Rule 22. 
may be refused recognition for misconduct — Rule 22. 
as members of Congress can not act as., or be given information 
without a power of attorney, their services should not be 
solicited — Rule 23. 
BAR 
foreign patents a— Rule 29. 

use will not bar patent here, if not patented by another or de- 
scribed in printed publications — Rule 27. 
inventions shown but not claimed in other applications may not 
be a — Rule 75. 

BRIEFS 

of authorities and arguments upon which appeal will be maintained 
to be ffied before day of hearing — Rule 137. 

same, interference cases — Rule 144. 

same, interference cases appealed— Rule 144. 

should be submitted in printed form — Rules 144, 163. 
CERTIFICATES 

of official character of notary to be ffied — Rule 47. 



INDEX. 



861 



in specifiic and distinct form must follow specification— Rule 37. 

not in conflict in interference, may be withdrawn and new appli- 
cation therefor filed— Rule 106. 

must be twice rejected before appeal— Rule 134. . , ^ ^ 

copies of rejected claims must accompany examiners statement 
on appeal — Rule 135. 

COMMISSIONER . «« iqk ia9 lAq 

appeals to, from examiner— Rules 68, I6b, 14Z, i4d. 

in interference cases — Rules 124, 143. 

from examiners-in-chief— Rule 136. t^- ^ ■ ^ c r^ , u- 

appeals from, to the court of appeals of the District of Columbia 

—Rule 148. ^ T, 1 -..rr 

reconsideration of cases decided by former— Rule 147. 
cases decided by, reopened only by himself— Rule 140. 

examiners-in-chief reheard only by written authority of- Rule 140. 

COMPLAINTS ^ T. 1 oo 

against examiners, how presented — Rule zz. 

COMPOSITION OF MATTER 
specimens, when required — Rule 62. 

COPIES 

of specifications, drawings, and patents will be furnished at speci- 
fied rates— Rules 16', 191. 

coupons receivable for — Rule 191. 

from works in the library — Rule 197. 

but no translations furnished— Rule 197. ■ v. ^ t> i aa 

of patents, etc., referred to in references will be furnished— Rule 66. 

of papers in pending cases to applicants for amendment— Rule lA. 

of claims may be obtained by opposing parties m interference- 
Rule 108. . ' J T, 1 1 CO 

of motion papers and affidavits to be served— Rule 15d. 
of forfeited and abandoned files— Rule 179. „ , ,„„ 
of files, records, etc., made only by the office— Rule 197. 
orders for, of assignments must contain liber and page— Rule lyz. 
CORRECTION OF ERRORS IN LETTERS PATENT— Rule 170. 

CORRESPONDENCE 
rules for conducting — Rules 1,13. -r> ^ -i a 

all business with the office should be transacted by— Rules 1, 4. 
all letters and communications to the office to be addressed to the 

Commissioner of Patents— Rule 2. -r, ^ r> 

all letters from the office to be sent m his name— Rule Z. 
postage, etc., must be prepaid— Rule 3. ^ t, i r 

to be held exclusively with assignee of entire interest— Rule b. 
with inventor in case of undivided interest — Rule 6. 
with attorney after power is filed— Rule 7. ■, t, i o 

double, with different parties in interest not allowed— Rule «. 
separate letter for each subject of inquiry required— Rule y. 
letters relating to application should state — Rule 10. 
letters relating to patents should state^ — Rule 11. 
answered promptly — Rule 13. ... 

copy of rules marked sent as respectful answer to certain inquiries 

— Rule 14. . , 1 Ti 1 on 

resumed with principal, if power is revoked— Rule ZO. 
discourteous communications returned to writers— Rule zz. 



862 iNDEi. 



COUPONS 
sold by the office and receivable for all printed copies of specifica 
tions and drawings — Rule 191. 

COURT OF APPEALS OF THE DISTRICT OF COLUMBIA 

appeals to — Rules 148-150. 

DATE, DURATION, AND FORM OF PATENTS 

date of— Rule 167. 

never antedated — Rule 167. 

duration of — Rule 168. 

duration of design — Rule 168. 

what is granted in a patent — Rule 168. 
DEPOSITIONS. (See Testimony.) 

formalities to be observed in preparing — Rules 155, 156. 

certificate of magistrate to accompany — :Rule 154 (3). 

stenographically taken — Rule 156. 

to be sealed up, addressed, and forwarded to the Commissioner of 
Patents— Rule 154 (3). 

when taken must be filed — Rule 154 (7). 

official, relatives of interested party not competent to take — 
—Rule 156. 
- foreign — Rule 158. 

rules of evidence apply to the taking of — Rule 159. 

subpoenas to secure attendance of witnesses — Rule 160. 

printing of — Rule 162. 
DELIVERY 

of patents — -Rule 169. 
DESIGN PATENTS 

to whom granted — Rules 24, 79. 

for what term of years — Rule 80. 

arrangement of specification — Rule 82. 

proceedings on applications — Rule 81. 

models, when not required — Rule 83. 

drawings — Rule 84. 
DISBARMENT 

of attorneys from practice — Rule 22. 
DISCLAIMERS 

who may make — Rule 181. 

grounds, form, and effect — Rule 181. 

different kinds of— Rule 182. 

fee required by law — Rule 181. 
DIVISION 

of applications — Rule 41, 42. 
DRAWINGS 

required by law when the nature of case admits — Rule 49. 

must show every feature of the invention — Rule 50. 

must be signed and attested — Rule 50. 

if of an improvement, must show connection with old structure 
—Rule 50. 

three editions to be printed and published by the office when pat- 
ented — ^Rule 51. 

for this purpose uniform standard of excellence required — Rule 52. 

papers and ink to be used in preparation of — Rule 52 (a) . 

size, marginal lines, and heading — Rule 52 (b). 

character and color of lines — Rule 52 (c). 



INDEX. OOO 

DRAWINGS— Continued. t, i ro /J^ 

fewest lines possible to be used and little shading— Rule 52 (d). 
scale of the drawing and number of sheets — Rule 52 (e). 
size, formation, and placing of letters and figures of reference — 

Rule 52 (f). ,.^ ,. X, . .-u 

like letters and figures must represent like parts throughout the 

drawing — Rule 52 (f). 
signatures to be placed in corners — Rule 52 (g). 
title, in pencil, upon back — Rule 52(g). 

large views, how arranged — Rule 52 (g). ^ . , r. 

preparation of figures specially for publication m Official Gazette 

should not be folded for transmission to the office— Rule 52 (i). 
no stamp, advertisement, or address permitted on face of— Rule 

new, required with application for reissue — Rule 53. 

signature to, and size of drawings for reissue of patents— Rule 53. 

specific rules relating to preparation of drawing will be enforced 

—Rule 54. . J -o 1 c. 

inferior or defective drawings will be rejected — Rule 54. 
competent artist only should be employed— Rule 55. 
office^will furnish or amend drawings if requested— Rules_ 54, 55. 
amendments to, must conform to model or specification— Rules 

70, 88. 
may be withdrawn for correction — Rule 72. 

mutilations — Rule 73. , .^ i, j + 

new, not required in application for renewal after abandonment 

'—Rule 173. • ■ ,. ^. t^ f t ■. 

original, may be used with renewal apphcation after torteiture 

—Rule 176. 
EVIDENCE. (See Testimony.) . , • „ 

established rules of evidence will be applied strictly m ail practice 

before the office— Rule 159. -.rw ^ 

official records and special matter used as— Rule 154 (e) _ 
none will be considered on hearing not taken and filed m compli- 
ance with rules — Rule 159. . ^l. i- 4. j 
monthly volumes of specifications and drawings are authenticated 

and admissible in courts as — Rule 209. 

EXAMINATION 

of applications, order of — Rule 63. 

privileged cases taking precedence in — Rule 63. 

as to form first made — Rule 64. 

delayed if model is condemned — Rule 58. 

reexamination after rejection if requested — Rule 65. 

suspended — Rule 77. 

reexamination of original upon reissue— Rule 90. v, i iq 

of papers by attorney not permitted without a power— Rule i». 

EXAMINERS 

appeals from— Rules 68, 135, 139, 142. 
complaints against — Rule 22. 
personal interviews with — Rules 13, 21, 152. 
digests — Rule 14. 

EXCEPTIONS 

to testimony — Rule 159. -d i„ i co 

notice of, to be given to office and adverse party— Rule iby. 



864 INDEX. 



EXECUTORS. (See Administrators.) 
EXHIBITS 

accompanying depositions in contested cases, how- transmitted — 
Rule 154(c). 

if not withdrawn after use, how disposed of — Rule 61. 
EXPRESS CHARGES, FREIGHT, ETC. 

must be prepaid in full — Rule 3. 
EXTENSIONS 

only by act of Congress — Rule 180. 

FEES 

final, will be called for on allowance of patent — Rule 164. 

if not paid on or before Thursday, too late for the weekly issue 

—Rule 167. 
if not paid within six months, patent forfeited — Rules 167, 174. 
to whom it may be paid — Rules 167, 194. 
New, required upon renewal after forfeiture — Rule 176. 
on appeal to examiners-in-chief, $10 — Rule 133. 
on appeal to Commissioner from examiners-in-chief, $20 — Rule 136. 
on interlocutory appeals (no fee) — Rule 142. 
on appeal to the court of appeals of the District of Columbia, $15 

—Rule 148. 
to be paid in advance — Rule 190. 
schedule of — Rule 191. 
mode of payment — Rule 194. 
registered letters — Rules 206, 194. 
postal money orders — Rules 206, 194. 
money by mail at risk of sender — Rules 206, 194. 
funds receivable — Rules 206, 194. 
money paid by mistake refunded — Rules 208, 195. 
FOREIGN COUNTRIES 

taking testimony in — Rule 158. 

FOREIGN PATENTS 

a bar to United States patent unless application filed within twelve 
months — Rule 29. 
FOREIGN USE 

will not bar a patent here if not patented by another or described in 
printed publication — Rule 27. 
FORFEITURE 

of patent by nonpayment of final fee — Rule 174. 
GAZETTE. (See Official Gazette.) 

GUARDIAN 

of insane person — Rule 25. 
HEARINGS— Rules 151, 152. 

postponement of interference cases — Rule 120. 
oral, before examiners-in-chief on appeal — Rule 137. 
hours of, by the Commissioner — Rule 151. 

examiners-in-chief — Rule 151. 

examiner of interferences — Rule 151. 

examiners — Rules 13, 152. 
before the court of appeals of the District of Columbia — Rule 150. 

INSANE PERSON 

application by guardian of — Rule 25. 

INTERVIEWS. (See Hearings.) 



INDEX. .865 



INTERFERENCES 
defined— Rule 93. 
in what cases declared — Rule 94. 
preparation for — Rule 95. 
failure to prepare for — Rule 96. 

notice of, from examiner to examiner of interferences — Rule 97. 
revision of notice by examiner of interferences — Rule 98. 
points of difference to be referred to Commissioner — Rule 99. 
jurisdiction in cases of — Rules 100, 101. 
by whom and how declared — Rule 102. 
notice to parties — Rule 103. 

motion for postponement of time of filing statements — Rule 104. 
certified copies used in place of original papers — Rule 105. 
claims not in conflict may be withdrawn — Rule 106. 
disclaimer to avoid interference — Rule 107. 
amendment during — Rules 106, 107, 109. 
inspection of claims of opposing parties — Rule 108. 
inventors showing, but not claiming — Rule 109. 
preliminary statement, how prepared, filed, opened — Rule 110. 

when opened to inspection — Rule 111. 
if defective, may be amended — Rules 112, 113. 
failing to file, judgment may be rendered on the record — Rule 114. 
subsequent testimony alleging prior dates excluded — ^Rule 115. 
presumption as to order of invention — Rule 116. 
preliminary statement not evidence — Rule 117. 
time for taking testimony — Rule 118. 
failure to take testimony — Rule 119. 
enlargement of time — Rule 121. 
motion to dissolve — Rule 122. 

non-patentability argued at final hearing — Rule 130. 
motion to stay proceedings — Rule 123. 
appeals to Commissioner and examiners-in-chief — Rule 124. 
appeals to court of appeals of District of Columbia — Rules 148, 150 
concessions of priority — Rule 125. 
action in statutory bar appears — Rule 126. 
second interference — Rule 127. 

suspension of interference for consideration of new references — 
Rule 128. 

addition of parties — Rule 129. 
prosecution or defense by assignee — Rule 131. 
claims of defeated parties shall stand rejected — Rule 132. 
appeals in — Rules 143, 146. 

INVENTION 

shown but not claimed may not bar other patents — Rule 75. 
ISSUE 

a patent will issue upon payment of final fee — Rule 164. 

applications when withdrawn from — Rules 78, 165, 166. 

weekly, will close on Thursday of each week — Rule 167. 

will bear date fourth Tuesday thereafter — Rule 167. 

JOINT INVENTORS 

defined— Rule 28. 

entitled to joint patent only — Rule 28. 

JOINT PATENTS 

to joint inventors — Rule 28. 

to inventor and assignee — Rule 26. 



866 INDEX. 



JURISDICTION— Rules 140, 153. 

after notice of allowance, examiner has none over case — Rule 78. 

examiner has jurisdiction till interference is declared — Rule 100. 

resumed by examiner on reference from examiner of interferences 
to determine patentability — Rule 122. 
LETTERS TO THE OFFICE. (See Correspondence.) 
LIBRARY 

regulations of — Rule 197. 

copies will be furnished by the office at usual rates — Rule 197. 
LICENSE 

may be oral or written — Rule 184(d). 
MODEL 

not required to be filed with application — Rule 56. 

if on examination one be found necessary request therefor will be 
made — Rule 56. 

requisites of — Rule 57. 

material and dimensions — Rule 58. 

how made — Rule 58. 

name of inventor should be permanently fixed thereon — Rule 58. 

if not strong and substantial, will be condemned — Rule 58. 

working model, when desirable — Rule 59. 

when returned or withdrawn — Rules 56, 60, 61, 72. 

when patented, open to inspection — Rule 14-16. 

not to be taken from the office except in custody of sworn employee 
—Rule 60. 

filed as exhibits in contested cases, may be withdrawn — Rule 61. 

if not claimed within reasonable time, may be disposed of by Com- 
missioner — Rule 61. 

amendments to, must conform to drawings or spefcifications — Rule 
70. 

when not required for designs — Rule 83. 

old, may be used with a new application — Rule 173. 

may be amended on reissue by drawings only — Rule 88. 
MONEYS. (See Fees.) 
MOTIONS— Rule 153. 

to amend preliminary statement — Rule 112. 

for postponement of time of filing statement — Rule 104. 

to dissolve interference — Rules 122, 123. 

for postponement of hearing — Rule 120. 

in contested cases — Rule 153. 

notice of — Rule 153. 

proof of service — Rule 153. 

will not be heard in absence of either party — Rule 153. 

will be heard by — Rule 153. 

right to open and close — Rule 153. 

equity practice in cases to which rules do not apply — Rule 153. 

to extend time for taking testimony — Rule 154(d). 

to take testimony in foreign countries — Rule 158(a). 
NOTICE 

of all motions in contested cases — Rule 153. 

of taking testimony in all cases — Rule 154(a). 
Interference cases 

to applicants who may become parties — Rule 109. 

to patentees who may become parties — Rule 93. 

to examiner of interferences — Rule 97. 



INDEX. 867 

NOTICE— Continued. 

to parties to — Rule 103. 

of defective statement in — Rule 112. 
Appeal cases 

of oral hearings before examiners-in-chief — Rule 137. 
Miscellaneous 

of use of official records as evidence — Rule 154 (e). 

of exceptions to evidence — Rule 159. 

of appeal to court of appeals of District of Columbia — Rule 149. 

of allowance of patent — Rule 164. 

new, to be given if case has been withdrawn from the issue — Rule 165. 

of adverse decision upon preliminary question without rejecting 
claim to be given to applicant — Rule 67. 

none given parties to forfeited cases of filing of subsequent appli- 
cations—Rule 178. 

.to conflicting parties who have the same attorney — Rule 97. 
OATH TO APPLICATION— Rule 46. 

must be made by inventor if alive — Rule 26. 

when made by administrator or executor — Rules 25, 47. 

in reissue cases — Rules 46, 87. 

additional, as to foreign patents — Rule 46. 

supplemental, to amendment — Rule 48. 

officers authorized to administer — Rule 47. 

certificates of officers administering — Rule 47. 

new, required in renewal application after abandonment — Rule 173. 

original, may be used in application for renewal after forfeiture — 
Rule 176. 
OFFICIAL ACTION 

will be based exclusively upon the written record — Rule 1. 

office can not act as adviser — Rule 14. 
OFFICIAL BUSINESS 

should be transacted in writing — Rule 1. 
OFFICIAL GAZETTE— Rule 196. 

subscription price — Rule 196. 

of single copies — Rule 196. 

furnished to public libraries free — Rule 196. 

annual index — Rule 196. 

amendments to rules published in — Rule 198. 

one edition of drawings published in — Rule 51. 

one view only, as a rule, shown in — Rule 52 (h). 

rules for preparing a figure for publication in — Rule 52 (h). 

notice of taking testimony, contested cases, published in — Rule 
154 (b). 
in interference cases — Rule 103. 
OFFICE FEES. (See Fees.) 
ORAL STATEMENT 

no attention will be paid to, if there is any disagreement or doubt 
—Rule 1. 
PATENTS 

who may obtain — Rule 24. 

in case the inventor dies — Rules 25, 26. 

to assignee and inventor — Rale 26. 

to joint inventors — Rule 28. 

for what causes granted or refused — Rule 24. 

for designs. (See Deisgns.) 



868 INDEX. 



PATENTS— Continued. 

showing but not claiming invention — Rule 75. 
Issue — Rule 164. 
if not paid on or before Thursday, too late for the weekly issue 

—Rule 167. 
final fee must be paid or patent will be withheld — Rule 167. 
weekly issue of, will close on Thursday — Rule 167. 
will bear date fourth Tuesday thereafter — Rule 167. 
will issue upon payment of final fee — Rule 164. 
will not be withdrawn from issue without approval of Commissioner 
—Rules 78, 165, 166. 
Date, duration and form 
will bear date not later than six months from allowance — Rule 167. 
not antedated — Rule 167. 

will contain title and grant for seventeen years — Rule 168. 
design patents, for three and a half, seven, and fourteen years — 

Rules 80, 168. 
printed copy of specification and drawings will be attached — 
Rule 168. 
Delivery 

delivered on the day of its date to — Rule 169. 
Correction of errors in 
mistakes in, incurred through fault of the office, will be corrected 

by certificate attached or by reissue — Rule 170. 
not incurred through fault of the office will not be corrected — 
Rule 170. 
PETITION 

form and substance of — Rules 33, 86. 
on formal questions — Rule 145. 
PERSONAL INTERVIEWS. (See Hearing and Interviews.) 

personal attendance unnecessary — Rule 4. 
POSTAGE, ETC. 

must be paid in full — Rule 3. ' 

POWERS OF ATTORNEY. (See Attorneys.) 

PRELIMINARY STATEMENT 

how prepared, filed, and opened — Rule 110. 

may be amended if defective — Rules 112, 113. 

failure to file — Rules 114, 115. 

motion to postpone filing of — Rule 104. 

not evidence^Rule 117. 
PRIORITY OF INVENTION 

judgment of_, interference cases — Rule 125. 

protests against issue of patents — Rule 12. 
PUBLICATIONS 

Official Gazette— Rule 198. 

annual index — Rule 198. 

monthly volumes of specifications and drawings — Rule 198. 

photolithographic copies of drawings — Rule 52. 

RECORDS, ETC. 

of office and models of patented inventions open to inspection — 

Rules 14, 16. 
mutilation of — Rule 73. 
may be used as evidence — Rule 154 (e). 
notice of intent to use them to be given — Rule 154 (e). 



INDEX. 



869 



RECONSIDERATION 

of cases decided by a former Commissioner — Rule 147. 

of adverse decision upon a preliminary question upon request of 
applicant — Rules 65, 67, 69. • 
REEXAMINATION 

of application will be made if insisted upon — Rule 65. 

REFERENCES 

will be given upon rejection — Rule 65. 

upon rejection for want of novelty, best will be cited — Rule 66. 

to be specifically stated — Rule 66. 

copies of patents, etc., referred to in, will be furnished if in posses- 
sion of office — Rule 66. 
REFERENCE LETTERS 

in drawings, directions — Rule 52 (f, g). 
REFUNDMENT 

of money paid by mistake — Rule 19^. 
REHEARINGS 

on appeal — Rule 140. 

REISSUES 

to whom granted and in what cases — Rule 85. 

when the inventor or assignee must sign application — Rules 53, 85. 

what must accompany the petition — Rule 86. 

prerequisites — Rule 87. 

affidavits in support of application — Rule 87. 

new matter not to be introduced — Rule 88. 

amendments may be made — Rule 88. 

separate patents for distinct parts may be issued — Rule 89. 

the original patent must be surrendered — Rule 91. 

loss of original patent must be shown and a copy furnished — 
Rule 91. 

what may be embraced — Rule 92. 

drawing and model to be amended only by each other — Rule 88. 

drawings must be new — Rule 53. 

take precedence in order of examination — Rule 63. 

original claims subject to reexamination — Rule 90. 

when in interference — Rule 94. 

to correct patent — Rule 170. 
REJECTIONS AND REFERENCES. (See References, Adverse 

Decision.) 

formal objections — Rules 64, 67. 

applicant will be notified of rejection, with reasons and references 
—Rule 65. 

on rejection for want of novelty best references will be cited — 
Rule 66. 

requisites of notice — Rule 66. 

on account of invention shown by others but not claimed, how 
overcome — Rules 75, 76. 

after two rejections appeal may be taken from examiner to exam- 
iners-in-chief — Rule 133. 

RENEWAL 

of application abandoned by failure to complete or prosecute — 
Rule 172. 

of application forfeited by nonpayment of final fee — Rules 175, 176. 
RESERVATION CLAUSES NOT PERMITTED 

provision as to, — Rule 44. 



870 - INDEX. 



SERVICE OF NOTICES 

in interference cases — ^Rules 97, 103. 

of appeal to court of appeals of District of Columbia — Rule 149. 

in contested cases — Rule 153. 

proof of service — Rule 153. 

for taking testimony — Rule 154 (b). 

of discovery upon appeal of grounds for granting or refusing letters 
patent not involved in the appeal — Rule 139. 
SIGNATURES 

to applications — Rules 26, 30, 85. 

to abandonments — Rules 60, 171. 

to specifications — Rule 40. 

to drawings — Rules 50, 52 (g). 

to models — Rule 58. 

what amendments require signature of applicant — Rules 60, 107, 182. 

to disclaimers — Rules 107, 182. 

to concessions of priority — Rule 125. 
SPECIFICATION 

requirements of — Rules 34-37. 

must set forth the precise invention — Rule 35. 

must point out new improvements specially — Rule 36. 

must refer by letters or figures to drawings — -Rule 38. 

must conclude with specific and distinct claims — Rule 37. 

order of arrangement in framing — Rule 39. 

how and by whom signed — Rule 40. 

must be legibly written on but one side of the paper — Rule 45. 

amendments to, must conform to drawings or model, if any — Rule 70. 
must be on separate sheets of paper — Rule 73. 

not to be returned after completion — Rule 72. 

erasures and insertions to be clearly specified — Rules 45, 73. 
not to be made by applicant — Rule 73. 

to be rewritten, if necessary — Rule 74. 

new, required in renewal application after abandonment — Rule 173. 

original, may be used in renewal application after forfeiture — 
Rule 176. 
SPECIMENS 

of composition of matter to be furnished when required — Rule 62. 
SUBPOENAS 

for witnesses to be issued by clerks of United States courts — Rule 160. 
SUBSTITUTION OF ATTORNEY 

by attorney only when he has power of substitution — Rule 19. 
TELEGRAMS 

not received before 3 p. m. answered the following day — Rule 13. 
TESTIMONY 

rules for taking and transmitting, in extensions, interferences, and 
other contested cases — Rule 154. 

notice-waiver, reasonable time to travel — Rule 154 (a). 

service of notice — Rule 154 (b). 

officer's certificate — Rule 154 (c). 

time for taking, in interference cases — Rule 118. 
failure to take — Rule 119. 
enlargement of time for taking — Rule 121. 

motion to extend time for taking — Rule 154 (d). 

official records, printed publications, etc., used as evidence — Rule 
154 (e). 



4 



INDEX. 871 



TESTIMONY— Continued. - 

formalities in preparing depositions — Rules 155, 156. 

relatives of interested parties not competent as officials to take — 
Rule 156. 

may be used in other interferences when relevant — Rule 157. 

evidence on hearing must comply with rules — Rule 159. 

formal objections to — Rule 159. 

copies of testimony to be filed in the office twenty days before 
hearing — Rule 162. 

how prepared — Rule 162. 

to be inspected by parties to the case only — Rule 161. 

can not be withdrawn; printing of— Rules 161, 162. 

subpoenas for witnesses — Rule 160. 
In foreign countries 

by leave of the Commissioner, granted only upon motion duly 
made — Rule 158 (a). 

interrogations — Rule 158 (c). 

papers completed, Commissioner will send them to foreign official 
—Rule 158 (d). 

who will return depositions to him under seal — Rule 158 (d). 

stipulations as to written interrogations — Rule 158 (e). 

weight given to testimony in foreign country — Rule 158 (f). 
TRANSLATIONS 

only made for official use — Rule 197. 
WITHDRAWAL 

cases withdrawn from issue, how and when — Rules 78, 165, 166. 



INDEX OF FORMS. 



APPENDIX B. 

Petition by sole inventor — No. 1. 

by joint inventors — No. 2. 

by an inventor for himself and an assignee — No. 3. 

with power of attorney — No. 4. 

by an administrator — No. 5. 

by an executor — No. 6. 

by a guardian of an insane person — No. 7. 

for a reissue (by an inventor, with assent of assignee) — No. 8. 

for a reissue (by assignee) — No. 9. 

for a patent for a design — No. 10. 

for the renewal of an application — No. 12. 
Specification for an art or process — No. 13. 

for a machine (with drawings) — No. 14. 

for a composition of matter — No. 15. 

for a design (with drawings) — No. 17. 
Oath, by a sole inventor (citizen of the United States or alien) 
—No. 18. 

by an applicant for a patent for a design — No. 19. 

by an applicant for reissue (inventor) — No. 20. 

by an applicant for reissue (assignee) — No. 21. 

supplemental — No. 22. 



872 INDEX OF FORMS. 

FORMS— Continued. 

as to loss of letters patent — No. 23. 

by an administrator as to loss of letters patent — No. 24. 
Power of attorney after application filed — No. 25. 

revocation of — No. 26. 
Amendment — No. 27. 
Disclaimer after patent — No. 28. 

during interference— No. 29. 
Appeals from principal examiner to examiners-in-chief — No. 30. 

examiner of interferences to examiners-in-chief — No. 31. 

examiners-in-chief to Commissioner — No. 32. 

examiners-in-chief to Commissioner (interference) — No. 33. 
Petition from principal examiner to the Commissioner — No. 34. 
Petition for copies of rejected and abandoned applications — No. 35. 
Preliminary statements of domestic inventor — No. 36. 

foreign inventor — No. 37. 
. Assignments of entire interest before issue of patent — No. 38. 
in letters patent — No. 39. 

of undivided interest in letters patent — No. 40. 

of territorial interest after grant of patent — No. 41, 
License, shop-right — No. 42. 
License — not exclusive — with royalty — No. 43. 
Depositions, notice of taking testimony — No. 44. 

form of — No. 45. 

certificate of officer — No. 46. 



COURT OF APPEALS OF THE 
DISTRICT OF COLUMBIA. 



Rules 

Appeals from the Commissioner — Appendix. 

opinions of lower court and Commissioner made part of record 

— Appendix. 
Sundays and legal holidays excluded — Appendix. 
Instructions to Appellants — Appendix. 
Forms 

appeals, notice of, to court of appeals of District of Columbia 
(ex parte). 
petition for, to court of appeals of District of Columbia {ex 

parte) — Appendix, 
notice of, to court of appeals of District of Columbia (inter- 
ference) — Appendix, 
petition for, to court of appeals of District of Columbia (inter- 
ference) — Appendix. 



